<PAGE> 1
AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON MAY 23, 2000
REGISTRATION NO. 333-32584
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, DC 20549
------------------------
AMENDMENT NO. 4
TO
FORM S-1
REGISTRATION STATEMENT
UNDER
THE SECURITIES ACT OF 1933
------------------------
GENOMETRIX INCORPORATED
(EXACT NAME OF REGISTRANT AS SPECIFIED IN ITS CHARTER)
<TABLE>
<S> <C> <C>
DELAWARE 8731 76-0634223
(STATE OR OTHER JURISDICTION OF (PRIMARY STANDARD INDUSTRIAL (IRS EMPLOYER
INCORPORATION OR ORGANIZATION) CLASSIFICATION CODE NUMBER) IDENTIFICATION NO.)
</TABLE>
2700 RESEARCH FOREST DRIVE
THE WOODLANDS, TX 77381
(281) 465-5000
(ADDRESS, INCLUDING ZIP CODE, AND TELEPHONE NUMBER,
INCLUDING AREA CODE, OF REGISTRANT'S PRINCIPAL EXECUTIVE OFFICES)
------------------------
MITCHELL D. EGGERS
CHIEF EXECUTIVE OFFICER
CHAIRMAN OF THE BOARD
GENOMETRIX INCORPORATED
2700 RESEARCH FOREST DRIVE
THE WOODLANDS, TX 77381
(281) 465-5000
(NAME, ADDRESS, INCLUDING ZIP CODE AND TELEPHONE NUMBER,
INCLUDING AREA CODE, OF AGENT FOR SERVICE)
------------------------
WITH COPIES TO:
<TABLE>
<S> <C>
STANFORD N. GOLDMAN, JR., ESQ. JUSTIN P. MORREALE, ESQ.
WILLIAM T. WHELAN, ESQ. GERALD J. KEHOE, ESQ.
MINTZ, LEVIN, COHN, FERRIS, BINGHAM DANA LLP
GLOVSKY AND POPEO, P.C. 150 FEDERAL STREET
ONE FINANCIAL CENTER BOSTON, MA 02110
BOSTON, MA 02111 (617) 951-8000
(617) 542-6000
</TABLE>
------------------------
APPROXIMATE DATE OF COMMENCEMENT OF PROPOSED SALE TO PUBLIC: As soon as
practicable after this Registration Statement becomes effective.
If any of the securities being registered on this Form are being offered on
a delayed or continuous basis pursuant to Rule 415 under the Securities Act,
check the following box. [ ]
If this Form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, check the following box and
list the Securities Act registration statement number of the earlier effective
registration statement for the same offering. [ ]
- ---------------
If this Form is a post-effective amendment filed pursuant to Rule 462(c)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. [ ]
- ---------------
If this Form is a post-effective amendment filed pursuant to Rule 462(d)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. [ ]
- ---------------
If delivery of the prospectus is expected to be made pursuant to Rule 434,
please check the following box. [ ]
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
<PAGE> 2
EXPLANATORY NOTE
The sole purpose of this Amendment No. 4 to Form S-1 (File No. 333-32584)
of Genometrix Incorporated is to file certain portions of the Exhibits listed in
Item 16(a) and in the Exhibit Index of Part II of the Registration Statement in
response to a letter from the U.S. Securities and Exchange Commission dated May
17, 2000 regarding our initial application for confidential treatment, as
initially filed with the Commission on March 15, 2000 and as amended on April
19, 2000.
<PAGE> 3
PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
ITEM 13. OTHER EXPENSES OF ISSUANCE AND DISTRIBUTION.
The following table sets forth an itemization of all estimated expenses,
all of which we will pay, in connection with the issuance and distribution of
the securities being registered:
<TABLE>
<S> <C>
SEC Registration Fee........................................ $25,503
Nasdaq National Market Listing Fee.......................... $95,000
NASD Filing Fee............................................. $12,500
Printing and Engraving Fees................................. *
Legal Fees and Expenses..................................... *
Accounting Fees and Expenses................................ *
Blue Sky Fees and Expenses.................................. 10,000
Transfer Agent and Registrar Fees........................... 10,000
Miscellaneous............................................... 20,000
-------
Total..................................................... $ *
=======
</TABLE>
- ---------------
* to be filed by amendment.
ITEM 14. INDEMNIFICATION OF DIRECTORS AND OFFICERS.
Our certificate of incorporation provides that we shall indemnify, to the
fullest extent authorized by the Delaware General Corporation Law, each person
who is involved in any litigation or other proceeding because such person is or
was a director or officer of Genometrix, or is or was serving as an officer or
director of another entity at our request, against all expense, loss or
liability reasonably incurred or suffered in connection therewith. Our By-Laws
provide that the right to indemnification includes the right to be paid expenses
incurred in defending any proceeding in advance of its final disposition,
provided, however, that such advance payment will only be made upon delivery to
us of an undertaking, by or on behalf of the director or officer, to repay all
amounts so advanced if it is ultimately determined that such director is not
entitled to indemnification. If we do not pay a proper claim for indemnification
in full within 60 days after we receive a written claim for such
indemnification, our By-Laws authorize the claimant to bring an action against
us and prescribe what constitutes a defense to such action.
Section 145 of the Delaware General Corporation Law permits a corporation
to indemnify any director or officer of the corporation against expenses
(including attorney's fees), judgments, fines and amounts paid in settlement
actually and reasonably incurred in connection with any action, suit or
proceeding brought by reason of the fact that such person is or was a director
or officer of the corporation, if such person acted in good faith and in a
manner that such person reasonably believed to be in, or not opposed to, the
best interests of the corporation, and, with respect to any criminal action or
proceeding, if such person had no reason to believe his or her conduct was
unlawful. In a derivative action, (i.e., one brought by or on behalf of the
corporation), indemnification may be provided only for expenses actually and
reasonably incurred by any director or officer in connection with the defense or
settlement of such an action or suit if such person acted in good faith and in a
manner that he or she reasonably believed to be in, or not opposed to, the best
interests of the corporation, except that no indemnification shall be provided
if such person shall have been adjudged to be liable to the corporation, unless
and only to the extent that the court in which the action or suit was brought
shall determine that the defendant is fairly and reasonably entitled to
indemnity for such expenses despite such adjudication of liability.
II-1
<PAGE> 4
Pursuant to Section 102(b)(7) of the Delaware General Corporation Law,
Article Ninth of our certificate of incorporation eliminates the liability of a
director to us or our stockholders for monetary damages for such a breach of
fiduciary duty as a director, except for liabilities arising:
- from any breach of the director's duty of loyalty to us or our
stockholders;
- from acts or omissions not in good faith or which involve intentional
misconduct or a knowing violation of law;
- under Section 174 of the Delaware General Corporation Law; and
- from any transaction from which the director derived an improper
personal benefit.
We carry insurance policies insuring our directors and officers against
certain liabilities that they may incur in their capacity as directors and
officers.
Additionally, reference is made to the Underwriting Agreement filed as
Exhibit 1.1 hereto, which provides for indemnification by the underwriters of
Genometrix, our directors and officers who sign the Registration Statement and
persons who control Genometrix, under the terms of the agreement.
ITEM 15. RECENT SALES OF UNREGISTERED SECURITIES.
In the three years preceding the filing of this Registration Statement, we
have sold the following securities that were not registered under the Securities
Act.
(a) Issuances of Capital Stock and Warrants
The sale and issuance of the securities described in paragraphs (1) through
(21) below were deemed to be exempt from registration under the Securities Act
by virtue of Section 4(2) or Regulation D promulgated thereunder and the
issuances in paragraph (22) were deemed exempt pursuant to Rule 701 under the
Securities Act. Items (1) through (10) have been adjusted for a 10 for 1 stock
split of our common stock on May 25, 1998.
(1) On August 29, 1997, we sold a total of 398,680 shares of Series A
Convertible Preferred Stock and issued warrants to purchase 79,730 shares
of our common stock at an exercise price of $1.50 per share to eleven
purchasers for an aggregate consideration of $598,020.
(2) On August 29, 1997, we issued two warrants to purchase a total of
84,000 shares of Series A Convertible Preferred Stock at an exercise price
of $1.50 per share to two persons in consideration for conversion of
outstanding notes issued by us pursuant to a Note and Warrant Purchase
Agreement dated July 6, 1994 and which expired in July 1999.
(3) On August 29, 1997, we issued four warrants to purchase a total
of 71,540 shares of our common stock at an exercise price of $1.50 per
share to two persons in consideration for conversion of outstanding notes
issued by us pursuant to a Note and Warrant Purchase Agreement dated July
6, 1994 of which 16,800 warrants expired in July 1999.
(4) On August 29, 1997, we issued a total of 273,710 shares of Series
A Convertible Preferred Stock to two persons in consideration for
conversion of outstanding notes issued by us pursuant to a Note and Warrant
Purchase Agreement dated July 6, 1994.
(5) On August 29, 1997, we issued 398,220 shares of our Series A
Convertible Preferred Stock to one person in consideration for conversion
of outstanding notes issued by us pursuant to a Note Purchase Agreement
dated May 17, 1995.
(6) On August 29, 1997, we issued one warrant to purchase 79,640
shares of our common stock at an exercise price of $1.50 per share to one
person in consideration for conversion of outstanding notes issued by us
pursuant to a Note Purchase Agreement dated May 17, 1995.
II-2
<PAGE> 5
(7) On August 29, 1997, we issued a warrant to purchase 19,930 shares
of our common stock at an exercise price of $1.50 per share to one person
as compensation for services under an Investment Agreement dated August 29,
1997.
(8) On March 26, 1998, we sold a total of 509,430 shares of our
Series B Convertible Preferred Stock to 28 purchasers for an aggregate
consideration of $1,120,746.
(9) On March 26, 1998, we issued a total of 7,010 shares of our
Series B Convertible Preferred Stock to two persons as compensation for
services under an Amended and Restated Financial Advisory Agreement dated
January 16, 1998.
(10) On March 26, 1998, we issued warrants to purchase a total of
26,210 shares of our common stock at an exercise price of $2.20 per share
to three persons as compensation for services under an Amended and Restated
Financial Advisory Agreement dated January 16, 1998.
(11) On September 3, 1998, we sold 1,129,247 shares of our Series C
Convertible Preferred Stock to forty-one purchasers for an aggregate
consideration of $2,665,023.
(12) On September 3, 1998, we issued a total of 44,564 shares of our
Series C Convertible Preferred Stock to two persons as compensation for
services under an Amended and Restated Financial Advisory Agreement dated
January 16, 1998.
(13) On September 3, 1998, we issued warrants for a total of 31,141
shares of our common stock at an exercise price of $2.36 per share to two
persons as compensation for services under an Amended and Restated
Financial Advisory Agreement dated January 16, 1998.
(14) On December 28, 1998, we sold 706,714 shares of our Series D
Convertible Preferred Stock to one purchaser for an aggregate consideration
of $2,000,000.
(15) On July 6, 1999, we sold 1,666,667 shares of our Series E
Convertible Preferred Stock to one purchaser for an aggregate consideration
of $5,000,000.
(16) On August 31, 1999, we sold a total of 1,481,670 shares our
Series F Convertible Preferred Stock and issued warrants to purchase a
total of 296,334 shares of our common stock at an exercise price of $3.00
per share to twelve purchasers for an aggregate consideration of
$4,445,010.
(17) On August 31, 1999 we issued warrants to purchase a total of
70,000 shares of our common stock at an exercise price of $3.00 per share
to one person as compensation for services under an Amended and Restated
Financial Advisory Agreement dated January 16, 1998.
(18) On August 31, 1999, we issued 16,667 shares of our Series F
Convertible Preferred Stock to one person as compensation for services
under an Amended and Restated Financial Advisory Agreement dated January
16, 1998.
(19) On December 29, 1999, we sold a total of 597,000 shares of our
Series F Convertible Preferred Stock and issued warrants to purchase a
total of 119,400 shares of our common stock to fourteen purchasers for an
aggregate consideration of $1,791,000.
(20) On January 13, 2000 we sold 1,000,000 shares of our Series E
Convertible Preferred Stock to one purchaser for an aggregate consideration
of $3,000,000.
(21) On January 31, 2000, we sold a total of 712,095 shares of our
Series F Convertible Preferred Stock and issued warrants to purchase a
total of 142,419 shares of our common stock at an exercise price of $3.00
per share to twenty-five purchasers for an aggregate consideration of
$2,136,285.
II-3
<PAGE> 6
(22) The following table sets forth information regarding grants of
stock options under the 1994 Stock Plan:
<TABLE>
<CAPTION>
NUMBER OF RANGE OF
DATES SHARES EXERCISE PRICES
- ----- --------- ------------------
<S> <C> <C>
October 1, 1996 through September 30, 1997............ 1,212,000 $ .01
October 1, 1997 through September 30, 1998............ 2,625,000 $ .50
October 1, 1998 through September 30, 1999............ 646,900 $2.36 - $3.00
</TABLE>
(b) Certain Grants and Exercises of Stock Options
The sale and issuance of the securities described below were deemed to be
exempt from registration under the Securities Act in reliance on Rule 701
promulgated under Section 3(b) of the Securities Act, as transactions by an
issuer not involving a public offering or transactions pursuant to compensatory
benefit plans and contracts relating to compensation as provided under Rule 701.
Pursuant to our 1994 Stock Plan, as of March 31, 2000 we have issued
options to purchase an aggregate of 8,348,780 shares of common stock. Of these
options:
- options to purchase 833,667 shares of common stock have been canceled
or lapsed without being exercised;
- options to purchase 3,608,583 shares of common stock have been
exercised; and
- options to purchase a total of 3,906,530 shares of common stock are
currently outstanding, at a weighted-average exercise price of $2.06
per share.
ITEM 16. EXHIBITS AND FINANCIAL STATEMENT SCHEDULES.
(a) EXHIBITS
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF EXHIBIT
- ------- ----------------------
<C> <S>
+1.1 Form of Underwriting Agreement
+3.1 Certificate of Incorporation of the Registrant
+3.2 Amended and Restated Certificate of Incorporation of the
Registrant to be effective upon completion of this offering
+3.3 By-Laws of the Registrant
+3.4 Amended and Restated By-Laws of the Registrant to be
effective upon completion of this offering
*4.1 Form of Common Stock Certificate
+4.2 Form of Warrant issued pursuant to a Note and Warrant
Purchase Agreement dated January 24, 1996 and list of
holders
*5.1 Opinion of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo,
P.C. with respect to the legality of securities being
registered
+10.1 The Registrant's 1994 Stock Plan
+10.2 The Registrant's 2000 Employee, Director and Consultant
Stock Option Plan
+-10.3 Patent License Agreement between the Registrant and
Massachusetts Institute of Technology dated May 27, 1994
+-10.4 Patent License Agreement between the Registrant and
Massachusetts Institute of Technology dated April 1, 1996
+-10.5 Exclusive License Agreement between the Registrant and
Baylor College of Medicine dated May 31, 1998
</TABLE>
II-4
<PAGE> 7
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF EXHIBIT
- ------- ----------------------
<C> <S>
+-10.6 License Agreement between the Registrant and Xenometrix,
Inc. dated August 27, 1999
+-10.7 License and Option Agreement between the Registrant and
Motorola, Inc. dated December 28, 1998
+-10.8 License and Research Agreement between the Registrant and
Motorola, Inc. dated July 6, 1999
+-10.9 Genomic Services Agreement between the Registrant and the
Procter & Gamble Company dated March 3, 2000
+10.10 First Amended and Restated Registration Rights Agreement
between the Registrant and Motorola, Inc. dated July 6, 1999
+10.11 Amended and Restated Registration Rights Agreement among the
Registrant, Investors and list of additional signatories
dated September 3, 1998
+10.12 Note and Warrant Purchase Agreement between the Registrant
and Palmetto Partners, Ltd. dated January 24, 1996
+10.13 Note and Warrant Purchase Agreement between the Registrant
and Donald and Dianne Kendall dated January 24, 1996
+10.14 Lease Agreement between the Registrant and Technology Center
I Building dated September 17, 1999
+-10.15 First Amendment to the License and Research Agreement
between the Registrant and Motorola, Inc. dated March 20,
2000
+10.16 Common Stock Purchase Agreement between the Registrant and
Motorola, Inc. dated March 27, 2000
23.1 Consent of PricewaterhouseCoopers LLP
*23.2 Consent of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo,
P.C. (see Exhibit 5.1)
+23.3 Consent of Fish & Richardson P.C.
+23.4 Consent of Robert H. Ellis
+23.5 Consent of Michael Hogan
+23.6 Consent of J. Evans Attwell
24.1 Powers of Attorney (See page II-6)
*27.1 Financial Data Schedule
</TABLE>
- ---------------
* To be filed by amendment.
- - Portions of this Exhibit have been omitted and filed separately with the
Commission pending a request for confidential treatment.
+ Previously filed with the SEC.
(b) FINANCIAL STATEMENT SCHEDULES
Financial Statement Schedules are omitted because the information is
included in our financial statements or notes to those financial statements.
ITEM 17. UNDERTAKINGS
The undersigned registrant hereby undertakes to provide to the underwriters
at the closing specified in the Underwriting Agreement, certificates in such
denominations and registered in such names as required by the underwriters to
permit prompt delivery to each purchaser.
Insofar as indemnification for liabilities arising under the Securities Act
may be permitted to directors, officers and controlling persons of the
registrant pursuant to the provisions described under
II-5
<PAGE> 8
Item 14 above, or otherwise, the registrant has been advised that in the opinion
of the Securities and Exchange Commission such indemnification is against public
policy as expressed in the Securities Act and is, therefore, unenforceable. In
the event that a claim for indemnification against such liabilities (other than
the payment by the registrant of expenses incurred or paid by a director,
officer or controlling person of the registrant in the successful defense of any
action, suit or proceeding) is asserted by such director, officer or controlling
person in connection with the securities being registered, the registrant will,
unless in the opinion of its counsel the matter has been settled by controlling
precedent, submit to a court of appropriate jurisdiction the question whether
such indemnification by it is against public policy as expressed in the
Securities Act and will be governed by the final adjudication of such issue.
The undersigned registrant hereby undertakes that:
(1) For purposes of determining any liability under the Securities Act
of 1933, the information omitted from the form of prospectus filed
as part of this registration statement in reliance upon Rule 430A
and contained in a form of prospectus filed by the registrant
pursuant to Rule 424(b)(1) or (4) or 497(h) under the Securities
Act shall be deemed to be part of this registration statement as
of the time it was declared effective.
(2) For the purpose of determining any liability under the Securities
Act of 1933, each post-effective amendment that contains a form of
prospectus shall be deemed to be a new registration statement
relating to the securities offered therein, and the offering of
such securities at that time shall be deemed to be the initial
bona fide offering thereof.
II-6
<PAGE> 9
SIGNATURES
Pursuant to the requirements of the Securities Act of 1933, the Registrant
certifies that it has duly caused this Registration Statement to be signed on
its behalf by the undersigned, thereunto duly authorized, in The Woodlands,
Texas on May 23, 2000.
GENOMETRIX INCORPORATED
By: /s/ MITCHELL D. EGGERS
------------------------------------
Mitchell D. Eggers
Chief Executive Officer, Director
and
Chairman of the Board
POWER OF ATTORNEY
We, the undersigned officers and directors of Genometrix Incorporated,
hereby severally constitute and appoint Mitchell D. Eggers and Robert H. Ellis,
and each of them singly (with full power to each of them to act alone), our true
and lawful attorneys-in-fact and agents, with full power of substitution and
resubstitution in each of them for him and in his name, place and stead, and in
any and all capacities, to sign any and all amendments (including post-effective
amendments) to this Registration Statement (or any other Registration Statement
for the same offering that is to be effective upon filing pursuant to Rule
462(b) under the Securities Act of 1933), and to file the same, with all
exhibits thereto and other documents in connection therewith, with the
Securities and Exchange Commission, granting unto said attorneys-in-fact and
agents, and each of them, full power and authority to do and perform each and
every act and thing requisite or necessary to be done in and about the premises,
as full to all intents and purposes as he might or could do in person, hereby
ratifying and confirming all that said attorneys-in-fact and agents or any of
them or their or his substitute or substitutes may lawfully do or cause to be
done by virtue hereof.
Pursuant to the requirements of the Securities Act of 1933, this
Registration Statement has been signed by the following persons in the
capacities held on the dates indicated.
<TABLE>
<CAPTION>
SIGNATURE TITLE DATE
--------- ----- ----
<S> <C> <C>
/s/ MITCHELL D. EGGERS Chief Executive Officer and May 23, 2000
- --------------------------------------------------- Director (principal executive
Mitchell D. Eggers officer)
/s/ ROBERT H. ELLIS President May 23, 2000
- ---------------------------------------------------
Robert H. Ellis
/s/ DAVID E. JORDEN Vice President and Chief Financial May 23, 2000
- --------------------------------------------------- Officer (principal financial and
David E. Jorden accounting officer)
* Director May 23, 2000
- ---------------------------------------------------
C. Thomas Caskey
</TABLE>
II-7
<PAGE> 10
<TABLE>
<CAPTION>
SIGNATURE TITLE DATE
--------- ----- ----
<S> <C> <C>
* Director May 23, 2000
- ---------------------------------------------------
Nicholas J. Naclerio
* Director May 23, 2000
- ---------------------------------------------------
Bruce Peacock
</TABLE>
* By executing his name hereto on May 23, 2000, Mitchell D. Eggers is signing
this document on behalf of the persons indicated above pursuant to the powers
of attorney duly executed by such persons and filed with the Securities and
Exchange Commission.
By: /s/ MITCHELL D. EGGERS
---------------------------------
Mitchell D. Eggers
Attorney-in-fact
II-8
<PAGE> 11
EXHIBIT INDEX
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF EXHIBIT
- ------- ----------------------
<C> <S>
+1.1 Form of Underwriting Agreement
+3.1 Certificate of Incorporation of the Registrant
+3.2 Amended and Restated Certificate of Incorporation of the
Registrant to be effective upon completion of this offering
+3.3 By-Laws of the Registrant
+3.4 Amended and Restated By-Laws of the Registrant to be
effective upon completion of this offering
*4.1 Form of Common Stock Certificate
+4.2 Form of Warrant issued pursuant to a Note and Warrant
Purchase Agreement dated January 24, 1996 and list of
holders
*5.1 Opinion of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo,
P.C. with respect to the legality of securities being
registered
+10.1 The Registrant's 1994 Stock Plan
+10.2 The Registrant's 2000 Employee, Director and Consultant
Stock Option Plan
+-10.3 Patent License Agreement between the Registrant and
Massachusetts Institute of Technology dated May 27,1994
+-10.4 Patent License Agreement between the Registrant and
Massachusetts Institute of Technology dated April 1, 1996
+-10.5 Exclusive License Agreement between the Registrant and
Baylor College of Medicine dated May 31, 1998
+-10.6 License Agreement between the Registrant and Xenometrix,
Inc. dated August 27, 1999
+-10.7 License and Option Agreement between the Registrant and
Motorola, Inc. dated December 28, 1998
+-10.8 License and Research Agreement between the Registrant and
Motorola, Inc. dated July 6, 1999
+-10.9 Genomic Services Agreement between the Registrant and the
Procter & Gamble Company dated March 3, 2000
+10.10 First Amended and Restated Registration Rights Agreement
between the Registrant and Motorola, Inc. dated July 6, 1999
+10.11 Amended and Restated Registration Rights Agreement among the
Registrant and Investors dated September 3, 1998
+10.12 Note and Warrant Purchase Agreement between the Registrant
and Palmetto Partners, Ltd. dated January 24, 1996
+10.13 Note and Warrant Purchase Agreement between the Registrant
and Donald and Dianne Kendall dated January 24, 1996
+10.14 Lease Agreement between the Registrant and Technology Center
I Building dated September 17, 1999
+-10.15 First Amendment to the License and Research Agreement
between the Registrant and Motorola, Inc. dated March 20,
2000
+10.16 Common Stock Purchase Agreement between the Registrant and
Motorola, Inc. dated March 27, 2000
23.1 Consent of PricewaterhouseCoopers LLP
*23.2 Consent of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo,
P.C. (see Exhibit 5.1)
</TABLE>
<PAGE> 12
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION OF EXHIBIT
- ------- ----------------------
<C> <S>
+23.3 Consent of Fish & Richardson P.C.
+23.4 Consent of Robert H. Ellis
+23.5 Consent of Michael Hogan
+23.6 Consent of J. Evans Attwell
24.1 Powers of Attorney (See page II-6)
*27.1 Financial Data Schedule
</TABLE>
- ---------------
* To be filed by amendment.
- - Portions of this Exhibit have been omitted and filed separately with the
Commission pending a request for confidential treatment.
+ Previously filed with the SEC.
<PAGE> 1
EXHIBIT 10.8 CONFIDENTIAL TREATMENT
GENOMETRIX INCORPORATED HAS
REQUESTED THAT THE MARKED PORTIONS
OF THIS DOCUMENT BE ACCORDED
CONFIDENTIAL TREATMENT PURSUANT TO
RULE 406 UNDER THE SECURITIES ACT OF
1933, AS AMENDED.
LICENSE AND RESEARCH AGREEMENT
THIS LICENSE AND RESEARCH AGREEMENT (the "Agreement") is dated as of
the 6th day of July, 1999 (the "EFFECTIVE DATE"), by and between MOTOROLA, INC.,
a Delaware corporation having an office at 4088 Commercial Drive, Northbrook,
Illinois 60062 (hereinafter, together with its SUBSIDIARIES, "MOTOROLA"), and
GENOMETRIX INCORPORATED, a Delaware corporation having its offices at 3608
Research Forest Drive, Suite B7, The Woodlands, Texas 77381 (hereinafter,
together with its SUBSIDIARIES, "GENOMETRIX").
WHEREAS, GENOMETRIX owns, controls or has acquired rights under various
patents and applications for patents pending, in various countries of the world,
referred to herein as the E-FIELD MANIPULATION IP, SURFACE CHEMISTRIES IP and
OPTICAL DETECTION IP (each as defined below);
WHEREAS, GENOMETRIX and MOTOROLA previously entered into the LICENSE
AND OPTION AGREEMENT (as hereinafter defined), whereby GENOMETRIX granted
MOTOROLA rights, including certain option rights, under the E-FIELD MANIPULATION
IP and the SURFACE CHEMISTRIES IP;
WHEREAS, MOTOROLA wishes to obtain certain additional rights and
certain co-exclusive (with GENOMETRIX) licenses under the E-FIELD MANIPULATION
IP and the SURFACE CHEMISTRIES IP, including certain rights to grant
sublicenses, and in addition thereto, MOTOROLA wishes to obtain rights under the
OPTICAL DETECTION IP and MOTOROLA desires that GENOMETRIX conduct certain
research relating to the SURFACE CHEMISTRIES IP; and
WHEREAS, GENOMETRIX is willing to grant MOTOROLA the licenses set forth
herein, and GENOMETRIX is willing to conduct the SURFACE CHEMISTRIES RESEARCH
PROGRAM (as hereinafter defined).
NOW, THEREFORE, the parties agree as follows:
SECTION 1. DEFINITIONS.
Capitalized terms used herein shall have the definitions assigned to
them in this Section 1, and shall include the singular as well as the plural.
1.1 AFFILIATE means any corporation or other legal entity that
controls, is controlled by, or is under common control with the named entity.
For purposes of this definition, "control" means the ownership, directly or
indirectly, of more than fifty percent (50%) of the outstanding equity
securities of the entity which are entitled to vote in the election of
directors.
<PAGE> 2
CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
1.2 BAYLOR means the Baylor College of Medicine, a Texas nonprofit
corporation having its principal place of business at One Baylor Plaza, Houston,
Texas 77030.
1.3 BAYLOR AGREEMENT means that certain agreement entered into by and
between GENOMETRIX and BAYLOR and having an effective date of May 31, 1998, and
as amended from time-to-time. A true and accurate copy of the BAYLOR AGREEMENT
is attached hereto as EXHIBIT C.
1.4 COLLABORATION AGREEMENT means that certain Collaboration Agreement
among MIT, GENOMETRIX and certain others, dated May 28, 1993 and amended
November 5, 1993, and as subsequently amended from time-to-time.
1.5 COMPLEMENTARY PRODUCTS means (a) products and services based on
arrays of size ********************************** ; (b) portable products and
services based on arrays of ************ for use at a single general point of
sample collection and analysis; (c) portable or non-portable products and
services based on arrays ************* for use in clinical diagnostics at any
location, so long as such diagnostic tests do not compete with
************************************************ (the "GENOMETRIX EXCLUSION"),
where allowed products and services shall include but are not limited to tests
for ************************************ (d) for E-FIELD MANIPULATION IP only as
applied to hybridization acceleration and stringency enhancement (specifically
claims 16 and 39 of United States Patent Number 5,653,939, together with
divisionals and continuations thereof), products and services *****************
and (e) such additional products and services based on arrays of any size as
MOTOROLA and GENOMETRIX may mutually agree in writing from time to time. For
purposes of this Section 1.5, an "array" may be comprised of a substrate onto
which biological probes are attached, or comparable implementations utilizing
microfluidics.
1.6 EFFECTIVE DATE means the date of this Agreement as set forth above.
1.7 E-FIELD MANIPULATION IP means GENOMETRIX INTELLECTUAL PROPERTY used
for the research, development, manufacture or use of COMPLEMENTARY PRODUCTS and
pertaining to the use of an electric field property, including electrical
properties and electrochemical properties, to: (a) identify molecular structures
within a sample substance applied to one or more test sites, (b) accelerate or
enhance the rate at which interaction mechanisms, such as hybridization, occur
between molecules at one or more test sites, and (c) increase the specificity
and/or selectivity of the interaction between two or more molecular structures.
E-FIELD MANIPULATION IP shall exclude: (x) the use of an electric field property
to synthesize and/or deposit molecular structures onto an array to form test
sites, and (y) optical, radioisotope, chemiluminescent and thermal detection
methods and technology. By way of example but not limitation, EXHIBIT D hereof
sets forth representative claims of certain existing GENOMETRIX PATENTS which
meet the criteria for E-FIELD MANIPULATION IP.
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1.8 E-FIELD PRODUCTS means COMPLEMENTARY PRODUCTS (or a portion
thereof) which (a) are covered in whole or in part by, or the use thereof is
covered in whole or in party by, the E-FIELD MANIPULATION IP; or (b) are
manufactured through use of a process which is covered in whole or in part by
the E-FIELD MANIPULATION IP.
1.9 GENOMETRIX INTELLECTUAL PROPERTY means GENOMETRIX PATENTS and
unpatented information relating to the research, development, manufacture or use
of COMPLEMENTARY PRODUCTS heretofore disclosed to MOTOROLA pursuant to Section
2.1 of the LICENSE AND OPTION AGREEMENT.
1.10 GENOMETRIX PATENTS means (i) the patents and patent applications
set forth on EXHIBIT A hereof, together with divisions, continuations,
continuations-in-part, reissues and foreign counterparts thereof; (ii) patents
and patent applications other than PROGRAM PATENTS claiming inventions or
discoveries conceived and reduced to practice by GENOMETRIX prior to December
28, 2001, and, with respect to all of the patents and patent applications
identified in (i) and (ii), which meet the criteria for E-FIELD MANIPULATION IP
or SURFACE CHEMISTRIES IP. The foregoing notwithstanding, the term GENOMETRIX
PATENTS includes only such patents and patent applications which are owned,
licensed to or otherwise controlled by GENOMETRIX and with respect to which
GENOMETRIX has the right to grant the licenses set forth herein; and provided,
further, GENOMETRIX PATENTS shall include such patents or patent applications
only to the extent to which and subject to the conditions under which GENOMETRIX
has the right to grant licenses or rights of the scope granted herein.
1.11 GENOMETRIX PRINCIPAL INVESTIGATOR has the meaning set forth in
Section 2.2.
1.12 HARC means the Houston Advanced Research Center, having its
principal offices at 4800 Research Forest Drive, The Woodlands, Texas, 77381.
1.13 LICENSE AND OPTION AGREEMENT means the License and Option
Agreement entered into between MOTOROLA and GENOMETRIX dated December 28, 1998.
A true and accurate copy of the LICENSE AND OPTION AGREEMENT is attached hereto
as EXHIBIT G.
1.14 LICENSED PRODUCTS means, collectively, the E-FIELD PRODUCTS, the
SURFACE CHEMISTRIES PRODUCTS and the OPTICAL DETECTION PRODUCTS.
1.15 MIT means the Massachusetts Institute of Technology, a corporation
duly organized and existing under the laws of the Commonwealth of Massachusetts
and having its principal offices at 74 Massachusetts Avenue, Cambridge,
Massachusetts, 02139.
1.16 MIT AGREEMENT means that certain agreement entered into by and
between GENOMETRIX and MIT and having an effective date of May 27, 1994, as
amended April 1,
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FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
1996 (the 5722L technology only), and as subsequently amended from time-to-time.
A true and accurate copy of the MIT AGREEMENT is attached hereto as EXHIBIT B.
1.17 MOTOROLA REPRESENTATIVE has the meaning set forth in Section 2.2.
1.18 MOTOROLA TECHNOLOGY means technology relating to ************
arrays which is provided by MOTOROLA to GENOMETRIX for use in the conduct of the
SURFACE CHEMISTRIES RESEARCH PROGRAM.
1.19 NET SALES means billings by MOTOROLA, its SUBSIDIARIES or its
sublicensees for LICENSED PRODUCTS sold, leased or transferred hereunder, less
the sum of the following:
(a) discounts allowed in amounts customary in the trade;
(b) sales, tariff duties and/or use taxes directly imposed and
with reference to particular sales;
(c) packing and crating charges separately stated;
(d) outbound transportation prepaid or allowed; and
(e) amounts allowed or credited on returns.
No deductions shall be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by MOTOROLA and on
its payroll, or for cost of collections. LICENSED PRODUCTS shall be considered
"sold" when billed out or invoiced. For LICENSED PRODUCTS disposed of other than
by sale, the NET SALES of such LICENSED PRODUCTS shall be determined based on
the fair market value of such LICENSED PRODUCTS. In the event that a LICENSED
PRODUCT is sold, leased, disposed of or otherwise transferred between MOTOROLA
and an entity affiliated with MOTOROLA in a transaction which results in revenue
to MOTOROLA, the NET SALES of LICENSED PRODUCTS with respect to such transfer
shall be calculated based on the price at which similar quantities of such
LICENSED PRODUCT would have been sold to an independent THIRD PARTY in an
arms-length transaction as of the date of such transfer.
In the event that a LICENSED PRODUCT is sold in combination with one or
more other integral components not by itself a LICENSED PRODUCT, and such other
integral components are not sold separately, the parties shall arrive at a
reasonable method of calculating NET SALES with respect to such LICENSED
PRODUCT, based on the relative fair market value of such LICENSED PRODUCT as
compared with the fair market value of such other integral components, and
pursuant to the procedures set forth in this paragraph. For the purposes of such
NET SALES determination, representative integral components may include: DNA
sequences, reagents, microfluidics and liquid handling systems, and data
acquisition, manipulation and display systems. In addition, royalties paid to
THIRD PARTIES shall be a consideration in
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
determining fair market value. If MOTOROLA and GENOMETRIX cannot agree on the
NET SALES of a particular LICENSED PRODUCT that is sold in combination with one
or more other integral components not by itself a LICENSED PRODUCT, such NET
SALES shall be determined as follows: a mutually agreeable THIRD PARTY with
experience in the relevant technology shall be selected by the American
Arbitration Association to determine the method of calculating the NET SALES
(the "Representative"). Each party shall present the Representative with a
detailed written position and have an opportunity for an oral presentation. The
decision of the Representative shall be final, binding and not appealable, and
such proceeding shall be completed within sixty (60) days of the selection of
the Representative. Each of GENOMETRIX and MOTOROLA shall bear its own costs in
connection with such NET SALES determination, and each shall pay one-half of the
fees of the Representative. Notwithstanding the foregoing, the parties agree
that the determination of NET SALES of LICENSED PRODUCTS pursuant to this
Section 1.19 is subject to the MIT AGREEMENT (to the extent the MIT AGREEMENT
applies); provided, however, that GENOMETRIX agrees (where applicable) to use
reasonable best efforts to obtain MIT's approval of the methods utilized by the
parties pursuant to this Section 1.19 for determining such NET SALES.
1.20 OPTICAL DETECTION IP means GENOMETRIX INTELLECTUAL PROPERTY
pertaining to the use of radiation to detect the presence of molecular
structures, as embodied in claims 20-27 of United States Patent Number
5,653,939, together with divisions, continuations, continuations-in-part,
reissues and foreign counterparts thereof. The foregoing notwithstanding, the
term OPTICAL DETECTION IP includes only such patents and patent applications
which are owned, licensed to or otherwise controlled by GENOMETRIX and with
respect to which GENOMETRIX has the right to grant the licenses set forth
herein; and provided, further, OPTICAL DETECTION IP shall include such patents
or patent applications only to the extent to which and subject to the conditions
under which GENOMETRIX has the right to grant licenses or rights of the scope
granted herein.
1.21 OPTICAL DETECTION PRODUCTS means (i) COMPLEMENTARY PRODUCTS
containing a ************** developed by MOTOROLA which are not used for
***************** and (ii) products containing a **************** sensor
developed by MOTOROLA and having ************* and used for low throughput
screening for academic research purposes only; and (a) which products (or the
optical sensor contained in such products) are covered in whole or in part by,
or the use thereof is covered in whole or in part by, the OPTICAL DETECTION IP;
or (b) which products (or the optical sensor contained in such products) are
manufactured through use of a process which is covered, in whole or in part, by
the OPTICAL DETECTION IP.
1.22 PROGRAM PATENTS means all patent applications and patents covering
PROGRAM TECHNOLOGY, together with divisions, continuations,
continuations-in-part, reissues and foreign counterparts thereof. MOTOROLA
PROGRAM PATENTS, GENOMETRIX PROGRAM PATENTS and JOINT PROGRAM PATENTS have the
respective meanings assigned to them in Section 5.1 hereof.
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
1.23 PROGRAM TECHNOLOGY means all inventions, discoveries, data,
information, know-how, improvements, developments or discoveries, whether or not
patentable, conceived and reduced to practice pursuant to the conduct of the
SURFACE CHEMISTRIES RESEARCH PROGRAM: (i) solely by employees or others acting
on behalf of GENOMETRIX; (ii) solely by employees or others acting on behalf of
MOTOROLA, or (iii) jointly by employees or others acting on behalf of GENOMETRIX
together with employees or others acting on behalf of MOTOROLA. MOTOROLA PROGRAM
TECHNOLOGY, GENOMETRIX PROGRAM TECHNOLOGY and JOINT PROGRAM TECHNOLOGY have the
respective meaning assigned to them in Section 2.8 hereof.
1.24 RESEARCH PLAN means the detailed description of the activities to
be conducted by GENOMETRIX pursuant to the SURFACE CHEMISTRIES RESEARCH PROGRAM,
as described in EXHIBIT E. EXHIBIT E may be amended from time to time during the
RESEARCH TERM upon the mutual agreement of the parties.
1.25 RESEARCH TERM has the meaning set forth in Section 2.1 hereof.
1.26 SUBLICENSE INCOME means the amounts received by MOTOROLA from a
THIRD PARTY sublicensee in consideration for the grant of rights under the
GENOMETRIX PATENTS, in the form of royalties on the NET SALES of E-FIELD
PRODUCTS and/or SURFACE CHEMISTRIES PRODUCTS by such sublicensee, or in the form
of up-front license fees, milestone payments, clinical development payments and
any other non-royalty cash payments which are specifically given to MOTOROLA in
return for the sublicense. If MOTOROLA receives consideration other than cash
for any such sublicense, SUBLICENSE INCOME shall be calculated as follows: (i)
the fair market value of the consideration received from the sublicensee, based
upon the cash sublicense fee, royalties and other cash consideration which would
have been paid by such sublicensee in the absence of any non-cash consideration,
will be calculated, and (ii) MOTOROLA shall pay GENOMETRIX a percentage of such
fair market value (i.e. SUBLICENSE INCOME) as provided in Section 6 hereof. For
purposes of the fair market value calculation provided for in subsection (i)
above, the fair market value shall not (a) exceed a reasonable percentage of net
sales for such products (combined with license fees), as evidenced by the levels
which are negotiated with THIRD PARTIES, (b) include value derived beyond those
payments which would have arisen from the sublicensee's affected business and
revenue stream, and (c) for the entities and their respective AFFILIATES
identified on ***********************************************************. The
foregoing provisions notwithstanding, MOTOROLA and GENOMETRIX recognize and
agree that the prior written consent of MIT may be required (as provided in
Section 2 of the MIT AGREEMENT) in connection with any sublicense of the E-FIELD
MANIPULATION IP in cases where MOTOROLA is to receive anything of value other
than cash in consideration for the grant of such sublicense, and that the
provisions of this Section 1.26 shall be subject to the applicable provisions of
the MIT AGREEMENT.
The parties agree to use their best reasonable efforts to agree upon
the determination of fair market value, and each of GENOMETRIX and MOTOROLA
agrees to work with the other
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diligently and in good faith to evaluate and respond to proposals and/or
counterproposals of the other party with respect to the fair market value of a
contemplated sublicense under the GENOMETRIX PATENTS granted or to be granted by
MOTOROLA. If the parties are unable to agree on a fair market value
determination as provided in the first paragraph (above) of this Section 1.26,
then such fair market value shall be determined as follows: a mutually agreeable
THIRD PARTY with experience in the relevant technology shall be selected by the
American Arbitration Association to determine the method of calculating such
fair market value (the "Representative"). Each party shall present the
Representative with a detailed written position and have an opportunity for an
oral presentation. The decision of the Representative shall be final, binding
and not appealable, and such proceeding shall be completed within sixty (60)
days of the selection of the Representative. At any point in this process,
including once the arbitration decision has been made, MOTOROLA shall have the
sole right to determine whether or not to grant the sublicense. Each of
GENOMETRIX and MOTOROLA shall bear its own costs in connection with such fair
market value determination, and each shall pay one-half of the fees of the
Representative. Notwithstanding the foregoing, the parties agree that the
determination of SUBLICENSE INCOME based on any assessment of fair market value
pursuant to this Section 1.26 is subject to the MIT AGREEMENT (to the extent the
MIT AGREEMENT applies); provided, however, that GENOMETRIX agrees (where
applicable) to use reasonable best efforts to obtain MIT's approval of the
methods utilized by the parties pursuant to this Section 1.26 for determining
such SUBLICENSE INCOME.
1.27 SUBSIDIARY means a corporation, company, or other entity more than
forty-eight percent (48%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other managing
authority) are, now or hereafter, owned or controlled, directly or indirectly by
a party hereto, but such corporation, company, or other entity shall be deemed
to be a SUBSIDIARY only so long as such ownership or control exists. Unless
otherwise specified, the term MOTOROLA includes its SUBSIDIARIES and the term
GENOMETRIX includes its SUBSIDIARIES.
1.28 SURFACE CHEMISTRIES IP means GENOMETRIX INTELLECTUAL PROPERTY used
for the research, development, manufacture or use of COMPLEMENTARY PRODUCTS and
pertaining to the use of specific molecular structures to alter the ionic and/or
hydrophobic properties of an array site to: (a) accelerate the rate at which
molecular interactions occur at the site, (b) increase the specificity and/or
selectivity of the interaction between molecular structures at the site, (c)
enable molecular interactions to occur with adequate or enhanced specificity at
non-elevated temperatures, including ambient or room temperature, and (d) enable
molecular interactions to occur at minimized salt concentrations, but excluding
combinatorial chemistry approaches and associated hybridization devices to
develop and/or evaluate alternative chemistries. By way of example and without
limitation, EXHIBIT D hereof sets forth representative claims of certain
existing GENOMETRIX PATENTS which meet the criteria for SURFACE CHEMISTRIES IP.
1.29 SURFACE CHEMISTRIES PRODUCTS means COMPLEMENTARY PRODUCTS
which (a) are covered in whole or in part by, or the use thereof is covered in
whole or in part by, the SURFACE CHEMISTRIES IP or (b) are manufactured through
use of a process which is covered, in whole or in part, the SURFACE CHEMISTRIES
IP.
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1.30 SURFACE CHEMISTRIES RESEARCH PROGRAM means the program of research
to be conducted by GENOMETRIX and funded by MOTOROLA pursuant to this Agreement,
as described in detail in Section 2 of this Agreement and in the RESEARCH PLAN.
1.31 THIRD PARTY means any individual or entity other than MOTOROLA and
its SUBSIDIARIES and other than GENOMETRIX and its SUBSIDIARIES.
1.32 VALID PATENT CLAIM means (i) a claim of an issued patent that has
not expired or been declared invalid by a court or administrative proceeding
from which there is no appeal; and (ii) a pending claim asserted in good faith
and with respect to which GENOMETRIX has an obligation to pay a royalty to MIT
pursuant to the MIT AGREEMENT.
1.33 UNIVERSAL ARRAY IP has the meaning set forth in Section 1.3 of the
LICENSE and OPTION AGREEMENT.
1.34 UNIVERSAL ARRAY PRODUCTS has the meaning set forth in Section 1.9
of the LICENSE and OPTION AGREEMENT.
SECTION 2. THE SURFACE CHEMISTRIES RESEARCH PROGRAM; RIGHTS TO PROGRAM
TECHNOLOGY AND PROGRAM PATENTS.
2.1 MOTOROLA and GENOMETRIX have agreed that GENOMETRIX will conduct
the SURFACE CHEMISTRIES RESEARCH PROGRAM for the purpose of adapting the
technology embodied in the SURFACE CHEMISTRIES IP to MOTOROLA's biochip
platform. The SURFACE CHEMISTRIES RESEARCH PROGRAM shall commence on or before
July 31, 1999 and, unless extended by the mutual written agreement of the
parties, or unless this Agreement is earlier terminated, shall expire on the
later of (i) January 31, 2000, or (ii) the date of completion by GENOMETRIX of
the tasks set forth in EXHIBIT E (hereinafter the "RESEARCH TERM"). Payment of
research funding by MOTOROLA and completion of the SURFACE CHEMISTRIES RESEARCH
PROGRAM shall be based upon the reasonable best efforts of GENOMETRIX to perform
the tasks specified in the RESEARCH PLAN, rather than the results generated. A
draft of the RESEARCH PLAN, describing the activities of GENOMETRIX pursuant to
the SURFACE CHEMISTRIES RESEARCH PROGRAM, is attached hereto as EXHIBIT E. On or
before July 31, 1999, MOTOROLA shall disclose to GENOMETRIX all MOTOROLA
TECHNOLOGY necessary or useful to initiate the conduct of the SURFACE
CHEMISTRIES RESEARCH PROGRAM. Further MOTOROLA TECHNOLOGY shall subsequently be
disclosed in a timely manner as needed to complete the SURFACE CHEMISTRIES
RESEARCH PROGRAM. Such MOTOROLA TECHNOLOGY shall be deemed to be the
CONFIDENTIAL INFORMATION of MOTOROLA hereunder, and shall be treated as such
pursuant to Section 10 hereof.
2.2 GENOMETRIX will use commercially reasonable efforts to conduct the
SURFACE CHEMISTRIES RESEARCH PROGRAM as provided in the RESEARCH PLAN.
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
Thomas Powdrill, D.V.M (the "GENOMETRIX PRINCIPAL INVESTIGATOR") shall serve as
the project leader, and shall keep MOTOROLA's representative Charles Brush,
Ph.D. (the "MOTOROLA REPRESENTATIVE") reasonably informed of the progress of the
RESEARCH PROGRAM, as set forth herein. Modifications to the RESEARCH PLAN may be
made from time to time during the RESEARCH TERM, upon the mutual written
agreement of MOTOROLA and GENOMETRIX.
2.3 MOTOROLA agrees to provide GENOMETRIX with funding in the amount of
*************** for the conduct of the SURFACE CHEMISTRIES RESEARCH PROGRAM.
Such amount shall be payable in the amount of **************** prior to the
initiation of the SURFACE CHEMISTRIES RESEARCH PROGRAM, ***************** after
the earlier of three months or completion of 1/2 of the SURFACE CHEMISTRIES
RESEARCH PROGRAM deliverables, and **************** upon completion of the
SURFACE CHEMISTRIES RESEARCH PROGRAM, and shall be non-refundable once
GENOMETRIX has completed the portion of the SURFACE CHEMISTRIES RESEARCH
corresponding to the portion of payment made by MOTOROLA, as set forth in the
RESEARCH PLAN. As provided in Section 2.1, completion of the SURFACE CHEMISTRIES
RESEARCH PROGRAM, and payment by MOTOROLA of the amounts set forth in this
Section 2.3, shall be based upon the reasonable best efforts of GENOMETRIX to
perform the specified tasks set forth in the RESEARCH PLAN, rather than the
results generated. Throughout the RESEARCH TERM, both parties shall review the
results generated, and if future tasks do not appear to be appropriate, shall in
good faith and upon mutual agreement either (i) determine an alternate course of
action or (ii) terminate the SURFACE CHEMISTRIES RESEARCH PROGRAM.
2.4 The GENOMETRIX PRINCIPAL INVESTIGATOR, the MOTOROLA REPRESENTATIVE,
and any others working on the SURFACE CHEMISTRIES RESEARCH PROGRAM will maintain
accurate scientific records relating to the SURFACE CHEMISTRIES RESEARCH
PROGRAM. It is understood that such records shall include laboratory notebooks
sufficient to document any PROGRAM TECHNOLOGY developed pursuant to the conduct
of the SURFACE CHEMISTRIES RESEARCH PROGRAM.
2.5 Commencing on the EFFECTIVE DATE, and thereafter during the
RESEARCH TERM, joint scientific meetings between the GENOMETRIX PRINCIPAL
INVESTIGATOR and the MOTOROLA REPRESENTATIVE shall occur at least monthly by
telephone or videoconference and at least once in person at GENOMETRIX's
facilities in The Woodlands, Texas, to discuss the results generated under the
SURFACE CHEMISTRIES RESEARCH PROGRAM and to consider modifications to or an
expansion of the RESEARCH PLAN based upon such results.
2.6 GENOMETRIX and MOTOROLA shall promptly disclose to each other all
PROGRAM TECHNOLOGY developed pursuant to the conduct of the SURFACE CHEMISTRIES
RESEARCH PROGRAM. Such PROGRAM TECHNOLOGY shall be considered as CONFIDENTIAL
INFORMATION pursuant to Section 10 hereof.
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
2.7 GENOMETRIX and MOTOROLA shall require the GENOMETRIX PRINCIPAL
INVESTIGATOR and the MOTOROLA REPRESENTATIVE, respectively, and any other
employees, agents or consultants of GENOMETRIX or MOTOROLA (as the case may be)
conducting activities under the SURFACE CHEMISTRIES RESEARCH PROGRAM, to be
subject to an obligation to assign to GENOMETRIX or MOTOROLA, respectively, all
of the right, title and interest of the GENOMETRIX PRINCIPAL INVESTIGATOR, the
MOTOROLA REPRESENTATIVE, or any such other employee of GENOMETRIX or MOTOROLA in
the PROGRAM TECHNOLOGY.
2.8 PROGRAM TECHNOLOGY conceived and reduced to practice solely by
employees or others acting on behalf of GENOMETRIX shall be owned solely by
GENOMETRIX (hereinafter "GENOMETRIX PROGRAM TECHNOLOGY"). PROGRAM TECHNOLOGY
conceived and reduced to practice solely by employees or others acting on behalf
of MOTOROLA shall be owned solely by MOTOROLA (hereinafter "MOTOROLA PROGRAM
TECHNOLOGY"). PROGRAM TECHNOLOGY conceived and reduced to practice jointly by
employees or others acting on behalf of GENOMETRIX together with employees or
others acting on behalf of MOTOROLA shall be owned jointly by MOTOROLA and
GENOMETRIX (hereinafter "JOINT PROGRAM TECHNOLOGY"). Use of any PROGRAM
TECHNOLOGY, regardless of whether such PROGRAM TECHNOLOGY is owned solely or
jointly by such party, shall be subject to the terms and conditions of this
Agreement, and in particular the provisions of Sections 2.9 and 2.10 below, and
neither party shall have the right to use the PROGRAM TECHNOLOGY, except as set
forth in this Section 2.
2.9 GENOMETRIX shall have the right to use all PROGRAM TECHNOLOGY for
any purposes (including to support the filing and prosecution of patent
applications owned or controlled by GENOMETRIX) other than use in conjunction
with gel pad format arrays, including without limitation for GENOMETRIX's
internal research purposes and to develop, make, use sell and import products
other than gel pad format array products or microfluidic products covered by a
patent or other intellectual property right of MOTOROLA. MOTOROLA hereby grants
GENOMETRIX a perpetual, world-wide, royalty-free right and license under its
interest in the PROGRAM TECHNOLOGY and under any PROGRAM PATENT RIGHTS, for
GENOMETRIX's internal research purposes, and to develop, make, use, offer for
sale, sell and import products other than gel pad format array products or
microfluidic products covered by a patent or other intellectual property right
of MOTOROLA. Such license shall include the right to grant sublicenses, except
that in no event shall GENOMETRIX have the right to grant sublicenses to any
THIRD PARTY in the field of COMPLEMENTARY PRODUCTS unless GENOMETRIX first
obtains the written consent of MOTOROLA, such consent not to be unreasonably
withheld or delayed.
2.10 (a) MOTOROLA shall have the right to use the MOTOROLA PROGRAM
TECHNOLOGY for its research, development and commercial purposes in
************.
(b) MOTOROLA shall have the right to use the JOINT PROGRAM
TECHNOLOGY and the GENOMETRIX PROGRAM TECHNOLOGY for its research,
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
development and commercial purposes in the field of COMPLEMENTARY PRODUCTS,
including to develop, make, use, sell and import E-FIELD PRODUCTS and SURFACE
CHEMISTRIES PRODUCTS. GENOMETRIX hereby grants MOTOROLA a perpetual, world-wide,
royalty-free right and license under its interest in the PROGRAM TECHNOLOGY and
the PROGRAM PATENTS to use such PROGRAM TECHNOLOGY for research and development
purposes in the field of COMPLEMENTARY PRODUCTS, and to develop, make, use,
offer for sale, sell and import COMPLEMENTARY PRODUCTS. Such license shall
include the right to grant sublicenses to one or more THIRD PARTIES in the field
of COMPLEMENTARY PRODUCTS.
SECTION 3. LICENSES UNDER THE E-FIELD MANIPULATION IP, THE SURFACE
CHEMISTRIES IP AND THE OPTICAL DETECTION IP.
3.1 GENOMETRIX hereby grants to MOTOROLA, a royalty-bearing, worldwide
license under the E-FIELD MANIPULATION IP, to make, have made, use, offer to
sell, sell and import E-FIELD PRODUCTS. GENOMETRIX shall retain the right to use
the E-FIELD MANIPULATION IP for any and all purposes, including, without
limitation, for use in COMPLEMENTARY PRODUCTS and to make, have made, use, offer
to sell, sell and import E-FIELD PRODUCTS; provided, that, so long as MOTOROLA
makes the payments set forth in Section 6.4 hereof, this license shall be
co-exclusive (with GENOMETRIX) whereby MOTOROLA shall have exclusive
sublicensing rights in the field of COMPLEMENTARY PRODUCTS, and GENOMETRIX
agrees not to grant any THIRD PARTY rights under the E-FIELD MANIPULATION IP to
make, have made, use, offer to sell, sell or import E-FIELD PRODUCTS. The
foregoing notwithstanding, MOTOROLA recognizes that the rights granted to it
pursuant to this Section 3.1 are subject to the MIT AGREEMENT, and the
exclusivity period set forth therein (hereinafter the "MIT Exclusivity Period").
*************** GENOMETRIX agrees to use its reasonable best efforts to meet its
obligations under the MIT AGREEMENT and to maintain the ****************. Upon
the expiration or early termination of the ***************, MIT shall have the
right *************************. Notwithstanding the foregoing, GENOMETRIX
agrees to use commercially reasonable efforts to obtain MIT's consent to
******************************* GENOMETRIX PATENTS comprising the E-FIELD
MANIPULATION IP licensed from MIT to GENOMETRIX; provided, that, such efforts
shall not be construed to require GENOMETRIX to pay any additional fees to MIT.
3.2 GENOMETRIX hereby grants to MOTOROLA, a royalty-bearing, perpetual,
worldwide license under the SURFACE CHEMISTRIES IP to make, have made, use,
offer to sell, sell and import SURFACE CHEMISTRIES PRODUCTS. GENOMETRIX shall
retain the right to use the SURFACE CHEMISTRIES IP for any and all purposes,
including without limitation, for use in COMPLEMENTARY PRODUCTS and to make,
have made, use, offer to sell, sell and import SURFACE CHEMISTRIES PRODUCTS;
provided, that, so long as MOTOROLA makes the payments set forth in Section 6.4
hereof this license shall be co-exclusive (with GENOMETRIX) whereby MOTOROLA
shall have exclusive sublicensing rights in the field of COMPLEMENTARY
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PRODUCTS, and GENOMETRIX agrees not to grant any THIRD PARTY rights under the
SURFACE CHEMISTRIES IP to make, use, sell or import SURFACE CHEMISTRIES
PRODUCTS.
3.3 The licenses granted to MOTOROLA pursuant to Sections 3.1 and 3.2
hereof shall include the right of MOTOROLA to grant sublicenses to THIRD PARTIES
so long as MOTOROLA pays GENOMETRIX the annual minimum royalty payments set
forth in Section 6.4 hereof. MOTOROLA shall provide GENOMETRIX with prompt
written notice of any such sublicense, and any such sublicensee shall agree in
writing to obligations of confidentiality and restrictions on use of the
GENOMETRIX INTELLECTUAL PROPERTY which are no less stringent than the
restrictions set forth herein and shall agree to be subject to (where
applicable) the MIT AGREEMENT and/or the BAYLOR AGREEMENT.
3.4 If MOTOROLA does not pay the minimum royalty payments set forth in
Section 6.4 hereof, GENOMETRIX shall provide written notification to MOTOROLA
thereof, after which MOTOROLA shall have thirty (30) days to make such past due
payments to GENOMETRIX in full. If MOTOROLA does not make such payments,
GENOMETRIX shall have the right to terminate MOTOROLA's right to grant
sublicenses under the licenses granted to MOTOROLA pursuant to Sections 3.1 and
3.2 above upon written notice to MOTOROLA. In the event MOTOROLA's right to
grant sublicenses under the licenses granted under Sections 3.1 and 3.2 is
terminated pursuant to this section 3.4, and so long as MOTOROLA is not
otherwise in default of this Agreement, (i) MOTOROLA shall maintain a
non-exclusive license under Sections 3.1 and 3.2 without the right to grant
sublicenses, and no further minimum royalty payments by MOTOROLA shall be due
pursuant to Section 6.4, and (ii) GENOMETRIX shall have the right to grant
licenses or sublicenses to one or more THIRD PARTIES under the E-FIELD
MANIPULATION IP and/or the SURFACE CHEMISTRIES IP in the field of COMPLEMENTARY
PRODUCTS.
3.5 GENOMETRIX hereby grants to MOTOROLA, a non-exclusive, royalty-
bearing, worldwide license under the OPTICAL DETECTION IP, to make, have made,
use, offer to sell, sell and import OPTICAL DETECTION PRODUCTS. Such license
shall include the right to grant sublicenses to THIRD PARTIES only to the extent
necessary to enable MOTOROLA to contract with THIRD PARTIES for the manufacture
of LICENSED PRODUCTS solely for MOTOROLA'S account and not for sale or other
commercial disposition by such THIRD PARTY; provided, that, such THIRD PARTY
shall agree in writing to obligations of confidentiality and restrictions on the
use of the GENOMETRIX INTELLECTUAL PROPERTY and the OPTICAL DETECTION IP which
are no less stringent than the restrictions set forth herein.
3.6 Notwithstanding any provision to the contrary contained in this
Agreement, the licenses and options granted to MOTOROLA hereunder shall not
include the field of use of *****************************************.
3.7 The licenses granted to MOTOROLA hereunder shall be subject to the
provisions of the MIT AGREEMENT and/or the BAYLOR AGREEMENT, to the extent set
forth in such agreements, and MOTOROLA shall be bound by certain obligations
(but in all cases excluding
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payment obligations) to MIT and to BAYLOR, respectively, as if it were the
licensee under such agreements, only to the extent set forth and as required in
such agreements. Copies of the MIT AGREEMENT and the BAYLOR AGREEMENT are
attached to this Agreement as EXHIBIT B and EXHIBIT C, respectively. Copies of
this Agreement shall be provided by GENOMETRIX to MIT and BAYLOR under
confidentiality.
3.8 MOTOROLA hereby acknowledges that GENOMETRIX has licensed certain
of the GENOMETRIX PATENTS and the OPTICAL DETECTION IP from THIRD PARTIES,
including without limitation MIT and BAYLOR, and the rights thereto granted to
MOTOROLA hereunder may be subject to compliance with and provisions of the terms
of such license agreements, including the right of THIRD PARTIES to practice
under the GENOMETRIX PATENTS and the OPTICAL DETECTION IP for non-commercial
research and academic purposes, as further provided in GENOMETRIX's agreements
with such THIRD PARTIES. If for any reason GENOMETRIX is in default or has
failed to comply with the terms of any agreement with THIRD PARTIES concerning
the GENOMETRIX PATENTS, then GENOMETRIX shall promptly give notice of such
default, termination, repudiation or cancellation to MOTOROLA who shall have the
option but not the obligation to take such steps and make such payments as may
be required in order to rectify the default and to bring the agreements pursuant
to which MOTOROLA holds the GENOMETRIX PATENTS and/or the OPTICAL DETECTION IP
into good standing; provided, that, any monies expended by MOTOROLA in so doing
shall be fully creditable against any royalties or other monies due and owing to
GENOMETRIX hereunder.
3.9 If GENOMETRIX grants a non-exclusive license or sublicense under
the E-FIELD MANIPULATION IP or the SURFACE CHEMISTRIES IP to any THIRD PARTY for
a field of use other than the field of COMPLEMENTARY PRODUCTS licensed to
MOTOROLA hereunder, then GENOMETRIX shall provide MOTOROLA with written
notification thereof, and MOTOROLA shall have the right, but not the obligation,
to obtain the same license on terms which are no less favorable (when taken as a
whole) to MOTOROLA than the most favorable terms offered to and accepted by any
non-exclusive licensee or sublicensee, taking into account any development
funding and other consideration.
3.10 If GENOMETRIX determines to grant an exclusive license or
sublicense under the E-FIELD MANIPULATION IP or the SURFACE CHEMISTRIES IP to a
THIRD PARTY in a field of use outside the field of COMPLEMENTARY PRODUCTS,
GENOMETRIX shall provide MOTOROLA with prompt written notification thereof prior
to offering such license or sublicense to a THIRD PARTY, and MOTOROLA shall have
an exclusive first right and option (the "Option") to obtain an exclusive,
world-wide, royalty-bearing license under the E-FIELD MANIPULATION IP or the
SURFACE CHEMISTRIES IP, as the case may be, and on reasonable terms and
conditions, in the field of use contemplated by GENOMETRIX for licensing to a
THIRD PARTY. MOTOROLA shall exercise such Option by providing GENOMETRIX with
written notice thereof within thirty (30) days after GENOMETRIX's notification
to MOTOROLA hereunder (the "Option Period"). If MOTOROLA exercises the Option
within the Option Period, GENOMETRIX and MOTOROLA shall promptly thereafter
commence good faith negotiations to arrive at and execute a definitive exclusive
license agreement with respect to the additional field of use for the E-FIELD
MANIPULATION IP or the SURFACE CHEMISTRIES IP (as the case may be) within sixty
(60)
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days from the date MOTOROLA exercises the Option hereunder (the "Negotiation
Period"). If MOTOROLA fails to exercise the Option within the Option Period, or
if MOTOROLA and GENOMETRIX are unable to execute the definitive license
agreement within the Negotiation Period, GENOMETRIX shall be free to exclusively
license or sublicense the applicable field of the E-FIELD MANIPULATION IP or the
SURFACE CHEMISTRIES IP (as the case may be) to a THIRD PARTY, and GENOMETRIX
shall have no further obligations to MOTOROLA with respect to thereto so long as
the exclusive license has actually been granted to a THIRD PARTY.
3.11 Notwithstanding any other provision of this Agreement, nothing
herein shall be construed as granting or requiring either party to grant any
license or rights under its intellectual property to any party outside this
Agreement.
3.12 MOTOROLA agrees that any LICENSED PRODUCT produced for sale in the
United States will be manufactured substantially in the United States, unless
any waiver of such requirement is obtained.
3.13 All rights reserved to the United States Government and others
under Public Law 96-517 and 98-620 shall remain and shall in no way be affected
by this Agreement.
SECTION 4. GENOMETRIX ACCESS TO HIGH DENSITY ARRAYS.
At the parties' mutual option, MOTOROLA agrees to provide high density
arrays ********************** to GENOMETRIX on mutually agreeable terms.
GENOMETRIX shall have the right to use such high density arrays for its internal
research purposes or as otherwise agreed. The rights granted to GENOMETRIX in
this section 4 shall not be transferred to a THIRD PARTY without the written
permission of MOTOROLA.
SECTION 5. RIGHTS TO FILE AND ENFORCE THE PROGRAM PATENTS AND THE
GENOMETRIX PATENTS.
5.1 (a) GENOMETRIX shall have the sole right to prepare, file,
prosecute and maintain PROGRAM PATENTS covering GENOMETRIX PROGRAM TECHNOLOGY
(hereinafter the "GENOMETRIX PROGRAM PATENTS"). MOTOROLA shall have the sole
right to prepare, file, prosecute and maintain PROGRAM PATENTS covering MOTOROLA
PROGRAM TECHNOLOGY (hereinafter "MOTOROLA PROGRAM PATENTS"). The parties shall
jointly determine whether to prepare, file, prosecute and maintain PROGRAM
PATENTS covering JOINT PROGRAM TECHNOLOGY (hereinafter "JOINT PROGRAM PATENTS"),
and in such case the parties shall mutually agree on an acceptable patent
attorney who will be responsible for the preparation, filing, prosecution and
maintenance of any such JOINT PROGRAM PATENTS. The parties agree to share
equally in all reasonable costs associated with the procurement and maintenance
of any such JOINT PROGRAM PATENTS. The parties shall consult with each other as
to the preparation, filing, prosecution and
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maintenance of the JOINT PROGRAM PATENTS reasonably prior to any deadline or
action with the U.S. Patent & Trademark Office or its foreign equivalent, and
shall furnish to the other party copies of relevant documents in its possession
reasonably in advance of such consultation. In the event of any disagreement
relating to the preparation, filing, prosecution and maintenance of the JOINT
PROGRAM PATENTS, the dispute shall be resolved pursuant to the dispute
resolution provisions of Section 11.9 hereof. In the event that either party
decides to abandon the JOINT PROGRAM PATENTS or later declines responsibility
for the prosecution or maintenance of the JOINT PROGRAM PATENTS, on a
country-by-country basis, such party shall provide reasonable prior written
notice to the other party of such intention to abandon or decline
responsibility, and such other party shall have the right, at its expense, to
prepare, file, prosecute and maintain such JOINT PROGRAM PATENTS in such
country.
(b) GENOMETRIX shall have the right to enforce and defend the
GENOMETRIX PROGRAM PATENTS. MOTOROLA shall have the sole right to enforce and
defend the MOTOROLA PROGRAM PATENTS. Enforcement of the JOINT PROGRAM PATENTS
shall be determined in good faith by the parties, and neither party shall have
the right to bring an action for infringement of the JOINT PROGRAM PATENTS
without obtaining the prior written consent of the other party, such consent not
to be unreasonably withheld or delayed. Neither party may settle any
infringement or declaratory judgment action relating to the JOINT PROGRAM
PATENTS without first obtaining the written consent of the other party, such
consent not to be unreasonably withheld.
5.2 GENOMETRIX shall have responsibility, alone or in conjunction with
its licensors, for the preparation, filing, prosecution, and maintenance of any
and all patent applications and patents comprising the GENOMETRIX PATENTS.
GENOMETRIX shall promptly inform MOTOROLA regarding all matters directly
pertaining to the prosecution or maintenance of the GENOMETRIX PATENTS, to the
extent such matters specifically relate to E-FIELD PRODUCTS or SURFACE
CHEMISTRIES PRODUCTS, and only to the extent permitted by its agreements with
licensors of the applicable patent or patent application. In addition, to the
extent permitted by its agreements with THIRD PARTIES, GENOMETRIX shall seek
MOTOROLA's counsel concerning all proposed courses of action affecting the scope
of such GENOMETRIX PATENTS, to the extent any such course of action directly
relates to E-FIELD PRODUCTS or SURFACE CHEMISTRIES PRODUCTS, including, but not
limited to, the countries in which patent prosecution should be obtained, and
MOTOROLA shall be provided with a reasonable opportunity to comment on any
document that GENOMETRIX intends to file or cause to be filed with the relevant
intellectual property or patent office relating directly to any such GENOMETRIX
PATENTS.
5.3 If, during the prosecution of any patent application covering any
GENOMETRIX PATENT in E-FIELD MANIPULATION IP or SURFACE CHEMISTRIES IP under
which MOTOROLA has obtained a license hereunder, GENOMETRIX decides or is
advised of a decision to discontinue prosecution of the application or
maintenance of such patent, GENOMETRIX shall promptly advise MOTOROLA of the
decision and, if so requested by MOTOROLA, shall, at its sole discretion and
only to the extent permitted under GENOMETRIX's agreements with THIRD PARTIES,
continue such prosecution or
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maintenance; provided, that, MOTOROLA shall bear all the costs associated with
such continued prosecution or maintenance.
5.4 If GENOMETRIX or MOTOROLA learn of the infringement or threatened
infringement of any GENOMETRIX PATENT such party will inform the other party
(GENOMETRIX or MOTOROLA, as the case may be) in writing within thirty (30) days
and provide all known evidence of the infringement.
5.5 MOTOROLA may request in writing that GENOMETRIX take legal action
against infringement or potential infringement of a GENOMETRIX PATENT under
which MOTOROLA has obtained a license hereunder if such infringement or
potential infringement relates to an E-FIELD PRODUCT or a SURFACE CHEMISTRIES
PRODUCT. In such case, GENOMETRIX and MOTOROLA shall confer to determine in good
faith an appropriate course of action to enforce such GENOMETRIX PATENT, or
otherwise abate the infringement thereof, to the extent permitted (where
applicable) by GENOMETRIX's agreements with THIRD PARTY licensors of the E-FIELD
MANIPULATION IP or the SURFACE CHEMISTRIES IP. Notwithstanding the foregoing,
and subject to the provisions of such THIRD PARTY agreements, MOTOROLA shall
have the right, but not the obligation, to enforce the GENOMETRIX PATENTS
comprising the E-FIELD MANIPULATION IP and the SURFACE CHEMISTRIES IP in the
field of COMPLEMENTARY PRODUCTS, including, without limitation, by commencing
legal action against infringers. MOTOROLA agrees to keep GENOMETRIX reasonably
informed of any activities conducted by it pursuant to this Section 5.5.
GENOMETRIX may, if requested by MOTOROLA, join in a lawsuit commenced by
MOTOROLA, but will not commence any legal action in the areas in which MOTOROLA
has rights of enforcement without the prior written consent of MOTOROLA, such
consent not to be unreasonably withheld.
5.6 Each party will cooperate with the other in litigation proceedings
against any THIRD PARTY brought under this Agreement, except that either party
may be represented, at its sole expense, by counsel of its choice in any suit
brought by the other party.
5.7 Any information provided to MOTOROLA pursuant to this Section 5
shall be considered the CONFIDENTIAL INFORMATION of GENOMETRIX and shall be
treated in accordance with the provisions of Section 10 hereof. Any information
provided to GENOMETRIX pursuant to this Section 5 shall be considered the
CONFIDENTIAL INFORMATION of MOTOROLA and shall be treated in accordance with the
provisions of Section 10 hereof.
SECTION 6. PAYMENTS AND REPORTS.
6.1 In consideration for the rights and license granted to MOTOROLA
pursuant to this Agreement, MOTOROLA shall pay GENOMETRIX an up front license
fee of **********************. Such amount shall be payable by MOTOROLA on or
before
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December 31, 2000, and ******** of such amount shall be creditable toward the
royalties (including minimum annual royalties) to be paid by MOTOROLA to
GENOMETRIX pursuant to Sections 6.2 and 6.4 hereof.
6.2 In consideration for the rights and licenses granted hereunder,
MOTOROLA shall pay GENOMETRIX a single royalty of ***************** NET SALES of
LICENSED PRODUCTS sold by MOTOROLA or its SUBSIDIARIES and covered by a VALID
PATENT CLAIM; provided, that, such royalty shall be fully paid-up, and no
further royalty shall be due, (a) for any calendar year for which the total
royalty payments by MOTOROLA under this Section 6.2, in addition to other
royalties which may be payable by MOTOROLA to GENOMETRIX pursuant to a license
agreement entered into between the parties after the EFFECTIVE DATE in
connection with the exercise by MOTOROLA of its option under the UNIVERSAL ARRAY
IP pursuant to the LICENSE AND OPTION AGREEMENT, *********************** or (b)
if the total royalties paid to GENOMETRIX by MOTOROLA under this Section 6.2
have reached **********************************. The foregoing notwithstanding,
if MOTOROLA has commercialized and continues to commercialize an OPTICAL
DETECTION PRODUCT covered by a VALID PATENT CLAIM, then the total royalty cap
shall be increased by************************ or a total of
****************************. The foregoing notwithstanding, if MOTOROLA's
royalties are fully paid up pursuant to subsection (a) or (b) hereof, and if
GENOMETRIX continues to have an obligation to pay royalties to MIT pursuant to
the MIT AGREEMENT as a result of the sale, lease transfer or other disposal of
LICENSED PRODUCTS by MOTOROLA, its SUBSIDIARIES or sublicensees pursuant to this
Agreement, MOTOROLA shall pay GENOMETRIX a royalty equal to the royalty which is
owed MIT by GENOMETRIX; provided, that, GENOMETRIX agrees to use reasonable best
efforts to obtain from MIT a waiver of the payment of such additional royalties;
and provided, further, that the term "reasonable best efforts" shall not be
interpreted to require GENOMETRIX to pay additional consideration to MIT in
order to secure such a waiver. If MOTOROLA is required to pay additional
consideration to MIT in order to maintain the Exclusivity Period (as defined in
Section 3.1 hereof) under the MIT AGREEMENT, and if MOTOROLA is continuing to
pay royalties on the NET SALES of LICENSED PRODUCTS to GENOMETRIX, the royalties
owed to GENOMETRIX by MOTOROLA shall be reduced by the amount paid by MOTOROLA
to MIT in consideration for the maintenance of the Exclusivity Period.
6.3 In consideration of the rights and licenses granted hereunder,
MOTOROLA shall pay GENOMETRIX a percentage of any SUBLICENSE INCOME received by
MOTOROLA in consideration for the grant of a sublicense under the GENOMETRIX
PATENTS. The applicable percentage of SUBLICENSE INCOME shall be determined as
follows: (i) Except as otherwise provided in Section 6.3(ii) below, MOTOROLA
shall pay GENOMETRIX ************************ and (ii) if MOTOROLA grants a
sublicense under the GENOMETRIX PATENTS to a THIRD PARTY *********** MOTOROLA
shall pay GENOMETRIX the percentage of SUBLICENSE INCOME set forth on
**********; provided, that, the percentages of SUBLICENSE INCOME set forth on
*********** shall only apply to those sublicenses of GENOMETRIX PATENTS
generated by MOTOROLA with the identified entities and their
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respective AFFILIATES and which provide rights in the fields set forth on
*********. The foregoing notwithstanding, in all cases the percentage of
SUBLICENSE INCOME payable by MOTOROLA to GENOMETRIX in consideration for the
grant of a sublicense under the GENOMETRIX PATENTS shall be equal to or greater
than the amount owed by GENOMETRIX to MIT pursuant to the MIT AGREEMENT.
MOTOROLA agrees to provide GENOMETRIX with advance written notice of and a copy
of any such sublicense agreements.
6.4 Except as provided in Section 3.4, MOTOROLA shall pay GENOMETRIX
minimum royalties in the following amounts so long as the exclusive license
under the MIT AGREEMENT is maintained:
Calendar Year 2000 ***********
Calendar Year 2001 ***********
Calendar Year 2002 and thereafter ***********
The minimum annual royalty payments shall be made to GENOMETRIX in
equal portions on a quarterly basis, within forty-five (45) days of the end of
each quarter. Each quarter, the total royalties due to GENOMETRIX for the
calendar year to that date shall be compared to the total due if minimum levels
were paid, and the amount paid for the quarter shall be adjusted such that
GENOMETRIX shall have received in aggregation for the calendar year the greater
of (i) the royalties actually due and (ii) the minimum royalty payment, if paid
in equal quarterly portions, which should have been paid to GENOMETRIX.
6.5 If one or more claims of a GENOMETRIX PATENT or the OPTICAL
DETECTION IP issues and covers a LICENSED PRODUCT under which MOTOROLA is not
paying royalties to GENOMETRIX pursuant to this Agreement as of such issue date,
then, in addition to the royalties payable by MOTOROLA pursuant to Sections 6.2,
6.3 and 6.4 above, MOTOROLA shall pay to GENOMETRIX a royalty of ************ of
the NET SALES of the LICENSED PRODUCTS covered by such GENOMETRIX PATENT or the
OPTICAL DETECTION IP for the period of time commencing on the date of first sale
of the applicable LICENSED PRODUCT until the issue date of the applicable
GENOMETRIX PATENT or the OPTICAL DETECTION IP: (a) up to a period of time not
exceed two (2) years; and (b) if full disclosure of the applicable GENOMETRIX
PATENT was made to MOTOROLA prior to the introduction of such LICENSED PRODUCT
into the commercial marketplace; and (c) no commercial product was available
during the applicable period which product was covered by the same intellectual
property without license from GENOMETRIX, except for products made available by
a THIRD PARTY to whom GENOMETRIX has provided written notice that such product
infringes the GENOMETRIX PATENTS and/or the OPTICAL DETECTION IP.
6.6 No multiple royalties shall be payable because any LICENSED
PRODUCT, its manufacture, use, lease, sale or import are or shall be covered by
more than one GENOMETRIX PATENT or the OPTICAL DETECTION IP licensed under this
Agreement or under the LICENSE and OPTION AGREEMENT, including UNIVERSAL ARRAY
PATENTS. All payments
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hereunder shall be paid in full, without deduction of taxes or other fees which
may be imposed by any government and which shall be paid by MOTOROLA.
6.7 Within thirty (30) days of the close of each calendar quarter
following the EFFECTIVE DATE, MOTOROLA shall (i) deliver to GENOMETRIX a report
setting forth all LICENSED PRODUCTS sold, leased or otherwise transferred or
disposed of by MOTOROLA or its SUBSIDIARIES during such calendar quarter, which
report shall indicate the NET SALES thereof and the amount of royalties due,
including a list of all deductions therefrom, or such report shall certify that
no LICENSED PRODUCTS were sold or otherwise disposed of, and (ii) to the extent
royalties are owed, MOTOROLA shall make such royalty payments to GENOMETRIX in
accordance with this Section 6. In the case of E-FIELD PRODUCTS and OPTICAL
DETECTION PRODUCTS, the reports submitted by MOTOROLA to GENOMETRIX shall
contain the information and be in the form required of GENOMETRIX pursuant to
Article 5 of the MIT AGREEMENT.
6.8 Within thirty (30) days of the grant of a sublicense under the
GENOMETRIX PATENTS, MOTOROLA shall deliver to GENOMETRIX a report setting forth
the type and amounts of consideration received in connection with the grant of
such sublicense, together with the amount of SUBLICENSE INCOME due GENOMETRIX
hereunder and the calculation of such amounts, and (ii) payment of all such
SUBLICENSE INCOME owed by MOTOROLA to GENOMETRIX as of such date. The foregoing
notwithstanding, to the extent all or a portion of such SUBLICENSE INCOME is
based on non-cash consideration received by MOTOROLA, GENOMETRIX and MOTOROLA
shall mutually agree in good faith to reasonable payment terms consistent with
Section 1.26; provided, that, such amount and payment terms shall be subject to
the MIT AGREEMENT and, where applicable, the consent of MIT; and provided,
further, such payment terms shall be structured in a manner whereby MOTOROLA's
payments to GENOMETRIX are consistent with the obligations of GENOMETRIX and
MOTOROLA under the MIT AGREEMENT, and any such payments to GENOMETRIX shall be
at least as great as the payments owed by GENOMETRIX to MIT pursuant to the MIT
AGREEMENT.
6.9 Within forty-five (45) days of the close of each calendar quarter
following the EFFECTIVE DATE, MOTOROLA shall: (i) deliver to GENOMETRIX a report
setting forth all LICENSED PRODUCTS sold, leased or otherwise transferred or
disposed of by MOTOROLA's sublicensees during such calendar quarter, which
report shall indicate the NET SALES of LICENSED PRODUCTS sold by such
sublicensees, and the amount of SUBLICENSE INCOME due in connection with such
sales, including a list of all deductions therefrom, or such report shall
certify that no LICENSED PRODUCTS were sold or otherwise disposed of by
sublicensees of MOTOROLA; and (ii) deliver to GENOMETRIX a report setting forth
all other SUBLICENSE INCOME received by MOTOROLA during such calendar quarter,
which report shall indicate the amount of SUBLICENSE INCOME received by MOTOROLA
and the amount of such SUBLICENSE INCOME owed to GENOMETRIX and the calculations
therefore; and (iii) to the extent SUBLICENSE INCOME is owed to GENOMETRIX,
including SUBLICENSE INCOME based on the sale of LICENSED PRODUCTS by a
sublicensee of MOTOROLA, MOTOROLA shall make such SUBLICENSE INCOME payments to
GENOMETRIX in accordance with this Section 6. The foregoing notwithstanding, to
the extent all or a portion of such SUBLICENSE INCOME is based on
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non-cash consideration received by MOTOROLA, payments shall be made in
accordance with the reasonable payment terms agreed upon pursuant to Section
6.8. In the case of reports of SUBLICENSE INCOME relating to the E-FIELD
MANIPULATION IP or E-FIELD PRODUCTS, the reports submitted by MOTOROLA to
GENOMETRIX shall contain the information and be in the form required of
GENOMETRIX and MOTOROLA pursuant to Article 5 of the MIT AGREEMENT.
6.10 Payments of royalties or SUBLICENSE INCOME by MOTOROLA shall be
made in United States currency and by wire transfer to such account as
GENOMETRIX may specify in writing from time to time or by check mailed to
GENOMETRIX at the address set forth in Section 11.12. In the event of a wire
transfer, notice of payment shall be sent by MOTOROLA to GENOMETRIX's address in
Section 11.12. Conversion of foreign currency to United States currency shall be
made at the exchange rate prevailing at the Chase Manhattan Bank (N.A.) on the
last business day of the reporting period to which such royalty or SUBLICENSE
INCOME payments relate, unless otherwise agreed in writing by GENOMETRIX and
MOTOROLA.
6.11 Any payment hereunder which shall be delayed beyond the due date
shall be subject to an interest charge at a per annum rate equal to the greater
of: (i) the prime rate in effect at the Chase Manhattan Bank (N.A.) on the due
date, or (ii) the rate which GENOMETRIX is required to pay to a THIRD PARTY
licensor, but in any event no greater than the highest rate allowed by law on
the due date. The payment of such interest shall not foreclose GENOMETRIX from
exercising any other rights it may have as a consequence of the lateness of any
payment.
6.12 With respect to the payments set forth in this Section 6, MOTOROLA
shall keep clear and accurate records with respect to all LICENSED PRODUCTS sold
or otherwise disposed of by MOTOROLA its SUBSIDIARIES or sublicensees; provided,
that, in the case of E-FIELD PRODUCTS and OPTICAL DETECTION PRODUCTS, such
records shall meet the requirements imposed on GENOMETRIX by MIT pursuant to
Article 5 of the MIT AGREEMENT. These records shall be retained by MOTOROLA for
a period of five (5) years from the date of reporting and payment,
notwithstanding the expiration or other termination of this Agreement.
GENOMETRIX shall have the right, through an independent certified public
accountant chosen by GENOMETRIX and reasonably acceptable to MOTOROLA, and at
the expense of GENOMETRIX, to examine and audit, not more than once a year, and
during normal business hours, all such records and such other records and
accounts as may, under recognized accounting practices, contain information
bearing upon the amount of royalties and SUBLICENSE INCOME payable to GENOMETRIX
under this Agreement. Prompt adjustment shall be made by MOTOROLA to compensate
for any errors and/or omissions disclosed by such examination or audit. Should
the amount of royalties or SUBLICENSE INCOME due as determined through the audit
exceed the amount of royalties and/or SUBLICENSE INCOME reported to be due by
MOTOROLA by *********************** whichever is greater, then MOTOROLA shall
pay the full cost of the audit.
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SECTION 7. TERM, TERMINATION AND ASSIGNABILITY.
7.1 The term of this Agreement shall be from the EFFECTIVE DATE until
expiration of the last patent or disallowance of the last GENOMETRIX PATENT,
patents included in the OPTICAL DETECTION IP or PROGRAM PATENT under which
MOTOROLA has obtained a license pursuant to this Agreement, unless earlier
terminated as provided elsewhere in this Agreement.
7.2 In the event of any material breach of this Agreement by either
party hereto, if such breach is not corrected within thirty (30) days after
written notice to the breaching party in the case of a breach in the payment of
royalties or SUBLICENSE INCOME under Section 6, or within forty-five (45) days
after written notice to the breaching party for all other breaches, the
non-breaching party may, at its option terminate this Agreement.
7.3 The parties hereto acknowledge and agree that: (a) in the event of
the termination of the MIT AGREEMENT, this Agreement shall not terminate and
MOTOROLA shall become a licensee of MIT as set forth in Section 13.6 of the MIT
AGREEMENT; and (b) in the event of the termination of the BAYLOR AGREEMENT, the
rights and obligations of MOTOROLA hereunder with respect to SURFACE CHEMISTRIES
IP and SURFACE CHEMISTRIES PRODUCTS specific to the BAYLOR AGREEMENT shall be
terminated; provided, that, GENOMETRIX shall have no objection if MOTOROLA
enters into good faith discussions with BAYLOR in order to continue its rights
and obligations under the SURFACE CHEMISTRIES IP originally licensed to
GENOMETRIX pursuant to the BAYLOR AGREEMENT.
7.4 The rights or privileges provided for in this Agreement may be
assigned or transferred by either party only with the prior written consent of
the other party, except that either party may assign its rights under this
Agreement, with the exception of section 4, to a successor in ownership of all
or substantially all of its assets relating to the subject matter of this
Agreement.
7.5 Sections 2.8, 2.9, 2.10, 5.1, 5.6, 5.7, Section 6 with respect to
payment and reporting obligations covering the sale, lease, transfer or
sublicensing of intellectual property, products or services prior to the
effective date of such expiration or termination, this Section 7.5, and Sections
8, 10 and 11 shall survive the expiration or termination of this Agreement. The
termination, relinquishment or expiration of this Agreement for any reason shall
be without prejudice to any rights which shall have accrued to the benefit of
either party under this Agreement prior to such termination, relinquishment or
expiration. Such termination, relinquishment or expiration shall not relieve
either party from obligations which are expressly indicated to survive
termination or expiration of this Agreement.
7.6 To avoid cancellation of the sublicense under the SURFACE
CHEMISTRIES IP, MOTOROLA shall have the right to purchase substantially all of
the assets relating to SURFACE CHEMISTRIES IP prior to entry by GENOMETRIX into
bankruptcy or other form of liquidation which would allow BAYLOR to terminate
its license to GENOMETRIX and GENOMETRIX's sublicensee.
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<PAGE> 22
CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
SECTION 8. PRODUCT LIABILITY, INSURANCE AND INDEMNIFICATION.
8.1 E-FIELD MANIPULATION IP AND OPTICAL DETECTION IP.
(a) In the case of E-FIELD MANIPULATION IP and E-FIELD
PRODUCTS and OPTICAL DETECTION IP and OPTICAL DETECTION PRODUCTS,
MOTOROLA shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold GENOMETRIX, MIT, HARC, and
BAYLOR, their trustees, directors, officers, employees and affiliates
harmless against all claims, proceedings, demands and liabilities of
any kind whatsoever, including legal expenses and reasonable attorneys'
fees, arising out of the death of or injury to any person or persons or
out of any damage to property, resulting from the production,
manufacture, sale, use, lease, consumption or advertisement of E-FIELD
PRODUCT(s) or OPTICAL DETECTION PRODUCTS(s) by MOTOROLA.
(b) Prior to the first use of an E-FIELD PRODUCT or an OPTICAL
DETECTION PRODUCT for a commercial application involving human
subjects, MOTOROLA shall obtain and carry in full force and effect
commercial, general liability insurance which shall protect GENOMETRIX,
MOTOROLA, MIT, HARC, and BAYLOR with respect to events covered by
Section 8.1(a) above. Such insurance shall be written by a reputable
insurance company authorized to do business in The Commonwealth of
Massachusetts, shall list GENOMETRIX, MIT, HARC, and BAYLOR as
additional named insured thereunder, shall be endorsed to include
product liability coverage and shall require thirty (30) days written
notice to be given to MIT, HARC, and BAYLOR prior to any cancellation
or material change thereof. The limits of such insurance shall not be
less than *********************** per occurrence with an aggregate of
***************** for personal injury or death, and *******************
per occurrence with an aggregate of ******************** for property
damage. MOTOROLA shall provide GENOMETRIX, MIT, HARC, and BAYLOR with
Certificates of Insurance evidencing the same.
8.2 SURFACE CHEMISTRIES IP.
(a) In the case of the SURFACE CHEMISTRIES IP and SURFACE
CHEMISTRIES PRODUCTS, each party shall notify the other of any claim,
lawsuit or other proceeding related to the SURFACE CHEMISTRIES IP.
MOTOROLA agrees that it will defend, indemnify and hold harmless
GENOMETRIX, BAYLOR, MIT, HARC, and each of their respective faculty
members, scientists, researchers, employees, officers, trustees,
directors, and agents and each of them (the "Indemnified Parties"),
from and against any and all claims, causes of action, lawsuits or
other proceedings filed or otherwise instituted against any of the
Indemnified Parties related directly or indirectly to or arising out of
an act or omission of MOTOROLA in the design, manufacture, use or sale
of a SURFACE CHEMISTRIES PRODUCT, or any other embodiment of the
SURFACE CHEMISTRIES IP.
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<PAGE> 23
CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
(b) MOTOROLA shall, for so long as MOTOROLA manufactures, uses
or sells any SURFACE CHEMISTRIES PRODUCT maintain in full force and
effect policies of (i) worker's compensation and/or employers'
liability insurance within statutory limits and (ii) general liability
insurance (with Broad Form General Liability endorsement) with limits
of not less than **************** per occurrence with an annual
aggregate of ****************** and (iii) products liability insurance,
with limits of not less than ******************** per occurrence with
an annual aggregate of ******************. Such coverage(s) shall be
purchased from a carrier or carriers reasonably acceptable to
GENOMETRIX and BAYLOR, and shall name GENOMETRIX and BAYLOR as an
additional insured. Upon request by GENOMETRIX, MOTOROLA shall provide
to GENOMETRIX and/or BAYLOR copies of said policies of insurance.
SECTION 9. WARRANTIES.
9.1 GENOMETRIX warrants that except as otherwise set forth herein and
in the EXHIBITS attached hereto, including without limitation the MIT AGREEMENT
and the BAYLOR AGREEMENT, to the best of its knowledge it owns or has license
rights to the GENOMETRIX PATENTS, free and clear of all liens, encumbrances, and
claims or demands of THIRD PARTIES.
9.2. Each party warrants that it has the authority to enter into this
Agreement.
9.3. GENOMETRIX warrants that, to the best of its knowledge, EXHIBIT A
sets forth all patents or patent applications claiming E-FIELD MANIPULATION IP,
SURFACE CHEMISTRIES IP and OPTICAL DETECTION IP owned, controlled, or licensed
by GENOMETRIX as of the EFFECTIVE DATE. To the best of GENOMETRIX's knowledge,
all patents listed in EXHIBIT A are valid and in full force and all patent
applications listed therein as pending have been prosecuted in good faith as
required by law and are in good standing. To the best knowledge of GENOMETRIX,
none of the patents or patent applications listed in EXHIBIT A is involved in
any interference or opposition proceeding, and there has been no written notice
received by GENOMETRIX that such proceeding will hereafter be commenced.
9.4 GENOMETRIX warrants that, to the best of its knowledge as of the
EFFECTIVE DATE, its licenses with MIT and BAYLOR are in good standing and that
as of the EFFECTIVE DATE it has satisfied the 1998 minimum sales requirements
set forth in the MIT AGREEMENT in order to maintain the MIT Exclusivity Period
(as defined in Section 3.1 hereof), and that it is capable of satisfying the
minimum sales requirements for 1999 in order to maintain the MIT Exclusivity
Period.
9.5 GENOMETRIX warrants that, to the best of its knowledge as of the
EFFECTIVE DATE, it has no knowledge or information that practice of the E-FIELD
MANIPULATION IP, the SURFACE CHEMISTRIES IP, the UNIVERSAL ARRAY IP or the
OPTICAL DETECTION IP constitutes infringement of any third party patents.
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<PAGE> 24
9.6 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT,
GENOMETRIX, ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND SUBSIDIARIES MAKE
NO REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, VALIDITY OF THE GENOMETRIX PATENTS, CLAIMS, ISSUED OR
PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT
DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION
MADE OR WARRANTY GIVEN BY GENOMETRIX THAT THE PRACTICE BY MOTOROLA OF THE
LICENSES GRANTED HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OF ANY THIRD
PARTY. EXCEPT AS EXPRESSLY STATED HEREIN, IN NO EVENT SHALL GENOMETRIX, ITS
TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES OR SUBSIDIARIES BE LIABLE FOR
INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR
INJURY TO PROPERTY AND LOST PROFITS.
SECTION 10. CONFIDENTIALITY.
10.1 CONFIDENTIAL INFORMATION means any materials or information
provided by a party (the "Disclosing Party") to the other party (the "Receiving
Party"), regardless of whether such information is provided in written, oral,
electronic or other form, except that CONFIDENTIAL INFORMATION shall not include
information or materials which:
(a) are in possession of the Receiving Party at the time of
disclosure thereof as demonstrated by prior written records;
(b) are or later become part of the public domain through no fault
of the Receiving Party;
(c) are received by the Receiving Party from a THIRD PARTY having
a lawful right to disclose same and having no obligation of
confidentiality to the Disclosing Party with respect thereto;
(d) are developed independently by the Receiving Party without use
of or access to the Confidential Information, as evidenced by
competent written records; or
(e) are required by law or regulation to be disclosed; provided,
however, that the Receiving Party has provided prompt, advance
written notice to the Disclosing Party so as to enable the
Disclosing Party to seek a protective order or otherwise
prevent disclosure of such Confidential Information.
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<PAGE> 25
10.2 The Receiving Party agrees that the CONFIDENTIAL INFORMATION of
the Disclosing Party shall be maintained in strict confidence and shall not be
disclosed, divulged or otherwise communicated by the Receiving Party to any
THIRD PARTY or used by the Receiving Party or any THIRD PARTY for any purposes
other than as expressly provided in this Agreement.
10.3 Neither party shall issue any press release or make any public
announcement relating to this Agreement without the prior written approval of
the other party.
SECTION 11 MISCELLANEOUS PROVISIONS.
11.1 MOTOROLA shall at all times during the term of this Agreement and
for so long as it shall practice the GENOMETRIX PATENTS or the OPTICAL DETECTION
IP, or develop, make, use or sell LICENSED PRODUCTS, comply with all laws that
may control the import, export, manufacture, use, sale, marketing, distribution
and other commercial exploitation of LICENSED PRODUCTS or any other activity
undertaken pursuant to this Agreement.
11.2 Nothing contained in this Agreement shall be construed as:
(a) conferring any license or other right, by
implication, estoppel or otherwise, under any patent
application, patent or patent right, except as herein
expressly granted; or
(b) conferring any license or right with respect to any
trademark, trade or brand name, a corporate name of
any party, or any other name or mark, or contraction,
abbreviation or simulation thereof.
11.3 No express or implied waiver by either of the parties to this
Agreement of any breach of any term, condition or obligation of this Agreement
by the other party shall be construed as a waiver of any subsequent breach of
that term, condition or obligation or of any other term, condition or obligation
of this Agreement of the same or of a different nature.
11.4 This Agreement is the result of negotiation between the parties
and, accordingly, shall not be construed for or against either party regardless
of which party drafted this Agreement or any portion thereof.
11.5 Nothing in this Agreement shall be construed as creating a
partnership, joint venture, or other formal business organization of any kind.
11.6 Except as expressly stated herein, in no event shall either party
be liable to the other party by reason of this Agreement or any breach or
termination of this Agreement for any loss of prospective profits or incidental
or special or consequential damages.
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<PAGE> 26
11.7 The headings and captions used in this Agreement are for
convenience only, and are not to be used in interpreting the obligations of the
parties under this Agreement.
11.8 GOVERNING LAW.
(a) To the extent required by the BAYLOR AGREEMENT, the
performance of this Agreement as it relates to rights and licenses
granted under the SURFACE CHEMISTRIES IP shall be subject to, made
under, and shall be construed and interpreted in accordance with the
laws of the State of Texas, and no conflict-of-laws rule or law that
might refer such construction and interpretation to the laws of another
state, republic, or country shall be considered. To the extent required
by the BAYLOR AGREEMENT, this Agreement is performable in part in
Harris County, Texas, and the parties mutually agree that, to the
extent required by the BAYLOR AGREEMENT, personal jurisdiction and
venue shall be proper in the state and federal courts situated in
Harris County, Texas, and, to the extent required by the BAYLOR
AGREEMENT, agree that any litigated dispute relating to the SURFACE
CHEMISTRIES IP or SURFACE CHEMISTRIES PRODUCTS will be conducted solely
in such courts.
(b) To the extent required by the MIT AGREEMENT, this
Agreement, as it relates to rights and licenses granted under the
E-FIELD MANIPULATION IP and the OPTICAL DETECTION IP, shall be
construed, governed, interpreted and applied in accordance with the
laws of the Commonwealth of Massachusetts, U.S.A., except that
questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
(c) In all cases not covered by Sections 11.8(a) and 11.8(b)
above, the performance of this Agreement as it relates to rights and
licenses granted to MOTOROLA shall be subject to, made under, and shall
be construed and interpreted in accordance with the laws of the State
of Delaware.
11.9 DISPUTE RESOLUTION.
(a) Disputes relating to the E-FIELD MANIPULATION IP and
E-FIELD PRODUCTS and OPTICAL DETECTION IP and OPTICAL DETECTION
PRODUCTS shall be governed by the provisions of this Section 11.9(a).
Except for the right of either party to apply to a court of competent
jurisdiction for a temporary restraining order, a preliminary
injunction, or other equitable relief to preserve the status quo or
prevent irreparable harm, any and all claims, disputes or controversies
arising under, out of, or in connection with this Agreement, including
any dispute relating to patent validity or infringement, which the
parties shall be unable to resolve within sixty (60) days shall be
mediated in good faith. The party raising such dispute shall promptly
advise the other party of such claim, dispute or controversy in a
writing which describes in reasonable detail the nature of such
dispute. If the parties are unable to resolve such dispute within such
sixty (60) day period, either party may demand mediation by written
notice to the other party. By not later than ten (10) business days
after the recipient has received such
26
<PAGE> 27
demand for mediation, each party shall have selected for itself a
representative who shall have the authority to bind such party, and
shall additionally have advised the other party in writing of the name
and title of such representative. By not later than twenty (20)
business days after the date of such demand for mediation, the party
against whom the dispute shall be raised shall select a mediation firm
in the Boston area which is acceptable to the other party (which
acceptance shall not be unreasonably withheld) and such representatives
shall schedule a date with such firm for a mediation hearing. Within
thirty (30) days after the selection of the mediation firm, the parties
shall enter into good faith mediation and shall share the costs
equally. If the representatives of the parties have not been able to
resolve the dispute within fifteen (15) business days after such
mediation hearing, the parties shall have the right to pursue any other
remedies legally available to resolve such dispute in either the courts
of The Commonwealth of Massachusetts or in the United States District
Court for the District of Massachusetts, to whose jurisdiction for such
purposes GENOMETRIX and MOTOROLA each hereby irrevocably consents and
submits. Notwithstanding the foregoing, nothing in this Section 11.9(a)
shall be construed to waive any rights or timely performance of any
obligations existing under this Agreement.
(b) Disputes arising out of this Agreement and not covered by
Section 11.9(a) above shall be governed by this Section 11.9(b). The
parties agree to attempt to settle all such disputes amicably between
them. The parties agree that any such dispute (other than relating to
the scope or validity of a patent and other than a dispute that is
covered by Section 11.9(a) above, will be submitted to non-binding
arbitration in a mutually agreeable location in accordance with the
commercial rules and procedures of the American Arbitration
Association, before a single arbitrator who will be reasonably familiar
with the relevant industry. Each party shall pay its own costs in
connection with such arbitration and one half of the fees of the
arbitrator While the parties agree to attempt arbitration in good
faith, nothing in this Section 11.9(b) shall be construed as limiting
the rights of either party to take legal action as it deems necessary
to enforce its rights under this Agreement.
11.10 If any term, clause, or provision of this Agreement shall be
judged to be invalid, the validity of any other term, clause, or provision shall
not be affected, and such invalid term, clause, or provision shall be deemed
deleted from this Agreement.
11.11 This Agreement, including the EXHIBITS attached hereto and
incorporated herein by reference, sets forth the entire agreement and
understanding between MOTOROLA and GENOMETRIX as to the subject matter hereof,
and supersedes and merges any and all prior discussions, correspondence,
agreements or understandings between the parties with respect to such matters,
including without limitation (i) the Non-Disclosure Agreement by and between the
parties and dated June 2, 1998; (ii) the Memorandum of Understanding dated
November 4, 1998, and (iii) the Memorandum of Understanding dated June 24, 1999.
In addition, with respect to the E-FIELD MANIPULATION IP and the SURFACE
CHEMISTRIES IP, except where expressly set forth herein, the rights and licenses
granted to MOTOROLA pursuant to the LICENSE AND OPTION AGREEMENT with respect to
the E-FIELD MANIPULATION IP and E-FIELD
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<PAGE> 28
PRODUCTS, and with respect to the SURFACE CHEMISTRIES IP and SURFACE CHEMISTRIES
PRODUCTS are terminated. This Agreement expressly supersedes the LICENSE AND
OPTION AGREEMENT with respect to the E-FIELD MANIPULATION IP and E-FIELD
PRODUCTS and the SURFACE CHEMISTRIES IP and SURFACE CHEMISTRIES products, and in
the event of any inconsistency between this Agreement and the LICENSE AND OPTION
AGREEMENT with respect to such IP and PRODUCTS, the provisions of this Agreement
shall prevail. Neither party shall be bound by any conditions, definitions,
warranties, understandings or representations with respect to such subject
matter other than as expressly provided herein (including the EXHIBITS attached
hereto and incorporated herein by reference) or as duly set forth on or
subsequent to the date hereof in writing and signed by a proper and duly
authorized official of the party to be bound thereby.
11.12 All notices required or permitted to be given hereunder shall be
in writing and shall be valid and sufficient if dispatched by registered mail,
postage prepaid, in any post office in the United States, or by recognized
courier service providing evidence of receipt, addressed as follows:
If to MOTOROLA to: MOTOROLA, Inc.
1303 East Algonquin Road
Schaumberg, Illinois 60062
Attention: Vice President for
Patents, Trademarks & Licensing
With a copy to: MOTOROLA, Inc.
4088 Commercial Avenue
Northbrook, IL 60062
Attention: Director of Contracts
If to GENOMETRIX to: Genometrix Incorporated
3608 Research Forest Drive, Suite B7
The Woodlands, Texas 77381
Attention: Mitchell D. Eggers, Ph.D.
Chief Executive Officer
With a copy to: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
Attention: Michael R. B. Balfe, Esq.
11.13 The date of receipt of such a notice shall be the date for the
commencement of the running of the period provided for in such notice, or the
date at which such notice takes effect, as the case may be.
11.14 For the term of this Agreement, and for one (1) year after the
expiration or termination of this Agreement, MOTOROLA agrees not to solicit any
employees of
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<PAGE> 29
GENOMETRIX without the prior written consent of GENOMETRIX, except through
advertisements and solicitations directed to the market generally. For the term
of this agreement, and for one (1) year after the expiration or termination of
this Agreement, GENOMETRIX agrees not to solicit any employees of MOTOROLA
BioChip Systems without the prior written consent of MOTOROLA, except through
advertisements and solicitations directed to the market generally.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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<PAGE> 30
In witness whereof, each party hereto has caused this Agreement to be
executed by its duly authorized representatives:
MOTOROLA, INC. GENOMETRIX INCORPORATED
By:/s/ Nicholas Naclerio By:/s/ Mitchell D. Eggers
Nicholas Naclerio Mitchell D. Eggers, Ph.D.
Vice President and General Manager Chief Executive Officer
By:/s/ F. John Motsinger
F. John Motsinger
Title: Corporate Vice President,
Assistant General Counsel,
and Director of Patents,
Trademarks and Licensing
30
<PAGE> 31
EXHIBIT A
GENOMETRIX PATENTS
1. E-FIELD MANIPULATION IP.
------------------------
U.S. 5,891,630
Issued 4/6/99
EPC 0543550
Issued 1/27/99
U.S. 5,846,708
Issued 12/18/98
U.S. 5,653,939
Issued 8/5/97
U.S. 5,670,322
Issued 9/23/97
U.S. 5,532,128
Issued 7/2/98
USSN 08/511,649
Filed 8/7/95
USSN 07/872,582
Filed 4/23/92
USSN 07/794,036
Filed 11/19/91
USSN 08/353,957
Filed 12/12/94
USSN 08/457,096
Filed 6/1/95
USSN 08/633,861
Filed 4/15/96
WO 93/22678
Filed 11/11/93
A-1
<PAGE> 32
PCT/US93/03829
Filed 4/23/92
EPC 92310253.7
Filed 11/10/92
2. SURFACE CHEMISTRIES IP.
-----------------------
USSN 08/749,967
Filed 11/14/97
USSN 60/006,697
Filed 11/14/95
PCT/US96/18,212
Filed 11/14/96
European 96938841.2
Filed 11/14/96
Canada 2235762
11/14/96
Japanese 09-519045
Filed 11/14/96
A-2
<PAGE> 33
EXHIBIT B
MIT AGREEMENT
B-1
<PAGE> 34
EXHIBIT C
BAYLOR AGREEMENT
C-1
<PAGE> 35
EXHIBIT D
REPRESENTATIVE CLAIMS OF THE GENOMETRIX PATENTS
EXISTING AS OF THE EFFECTIVE DATE
1. REPRESENTATIVE CLAIMS OF THE GENOMETRIX PATENTS MEETING THE CRITERIA
FOR E-FIELD MANIPULATION IP.
(a) Claims 1-10, 17-19, 14-15, 16 and 39 of United States Patent
Number 5,653,939;
(b) Claims 1-5, 10-12, 15-16, 19-33, and 42-43 of United States
Patent Number 5,846,708;
(c) All claims of United States Patent Number 5,670,322;
(d) All claims of United States Patent Number, 5,532,128;
(e) Claim 70 of GENOMETRIX's United States patent application USSN
09/002,170;
(f) All claims of United States Patent Number 5,891,630; and
(g) All claims of European Patent Number 0543550.
2. REPRESENTATIVE CLAIMS OF THE GENOMETRIX PATENTS MEETING THE CRITERIA
FOR SURFACE CHEMISTRIES IP.
Claims 1-21 of the GENOMETRIX PATENT licensed to GENOMETRIX from BAYLOR
and having United States Patent Application Serial No. 08/749,967 and
entitled "Integrated Nucleic Acid Hybridization Devices Based Upon
Active Surface Chemistry."
D-1
<PAGE> 36
CONFIDENTIAL MATERIAL
OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH
OMISSIONS.
EXHIBIT E
***************** RESEARCH PLAN
MOTOROLA SPONSORED RESEARCH PLAN
OBJECTIVE: ESTABLISHMENT OF FEASIBILITY OF ADAPTATION OF HYBRIDIZATION
ENHANCEMENT CHEMISTRIES TO THE MOTOROLA BIOCHIP GEL PAD PLATFORM.
BACKGROUND
Genometrix has developed proprietary ********************* which enhance the
************* process by ************* the ******************** of target -
****************************** by ******* than a factor of *** relative to
non-modified **********************. Such modifications may be ********* by
********************, in a range which is *************** to the ************
*****************************. In addition, such modifications may be made in a
************, allowing the *********** process to occur only at the *****
******* in a *****************. Further, such ******* modifications allow the
********* of ***************** in the ********* in the area of the *****
*********** to screen the ******************************************************
which is necessary for specific **************** by ****************. This
latter observation allows ************* to ***** in a ******************** of
essentially ***************************** any ******* or *******************
*********** which may compromise binding of *************************** in
traditional ************* buffers containing supporting ***********************.
RESEARCH OUTLINE
- - APPLICATION OF *************************** TO *** MATRICES
Investigation of the feasibility of ********** of ******* components into
the **************** will follow essentially two strategies. In the first,
the *************** may be implemented as part of the *************** upon
which the ******* containing ***** molecules is *********. Such a *******
may in fact be designed to have some ********************** which allow
*********** of the active ********** into the **********. It is predicted
that the efficacy of such modifications will be dependent upon the relative
******** between the ************************* and potential ************
********, as well as the *********** component of ******************* the
**********.
A second strategy will be to implement **************** into the ***
itself. A variety of ****************** components have been tested at
Genometrix and have been shown to have beneficial, ***********************
properties. ***************** of ********* of this type
E-1
<PAGE> 37
CONFIDENTIAL MATERIAL
OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH
OMISSIONS.
may have an added advantage in normalizing the *********************** of
************ within the ***. Along the same lines, active ********** may be
introduced into the ******************* itself by derivitization of
**************************.
- - EVALUATION OF *********** AND ********************* OF CANDIDATE SURFACES
*********** model systems have been developed at Genometrix to evaluate
******* components of the ************* process. Such systems also
incorporate the ability to evaluate both **************** as well as
*********** by the incorporation of ******************* of every type at
************* on the ***************. *********************** libraries
exist as both small *****************, *************, ********************
***********.
It is proposed that all **************************** be evaluated
*********** using such a model system. Potential *********** strategies of
******************** will be compared to existing modified and unmodified
*************** developed at Genometrix.
- - FEASIBILITY OF USING ******************* TO REPLACE **************
If it is determined that the *********** component of **************
******** limits the functionality ********************, other *******
******** may be evaluated which may be less restrictive. A variety of
****************** exist for which it is possible to both ***********
*********** as well as ********************** with ***********************
*********. Such supports may be systematically evaluated as outlined above
using model systems allowing ******************** as well as determinations
of **************** and *********** in the context of ***********
*************.
The level of effort consists of ***************** working for a period of 6
months under the direction of ************************. Interaction among the
investigators at Motorola and Genometrix and the reporting activities will be
governed by the LICENSE AND RESEARCH AGREEMENT.
E-2
<PAGE> 38
CONFIDENTIAL MATERIAL
OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH
OMISSIONS.
CONFIDENTIAL
EXHIBIT F
THIRD PARTIES WITH WHOM
GENOMETRIX HAS PREVIOUSLY NEGOTIATED
************ ******* of SUBLICENSE INCOME for the field of
E-FIELD MANIPULATION IP, (specifically for claims 16
and 39 of United States Patent Number 5,653, 939).
SUBLICENSE INCOME shall not exceed the following
aggregate consideration: ************************ for
the term of the sublicense (not to exceed the life of
the applicable patent claims); and
*********************; provided, that, the foregoing
consideration is documented in a bonafide offer
*********** GENOMETRIX and reviewed by a mutually
agreed upon THIRD PARTY.
The cash value or fair market value of sublicensing
terms agreed upon may be ********************* those
discussed previously between *******************
GENOMETRIX, due to differences in the degree of
******************** or other market factors. The
foregoing notwithstanding, the parties recognize and
agree that in the event MOTOROLA negotiates an
agreement ******************* with terms
substantially the same as the terms previously
negotiated between GENOMETRIX ***************,
GENOMETRIX shall realize ********************** the
maximum aggregate consideration, as set forth above.
************* ******* SUBLICENSE INCOME
E-FIELD MANIPULATION IP and
SURFACE CHEMISTRIES IP
************* ******* SUBLICENSE INCOME
E-FIELD MANIPULATION IP
************* ******* SUBLICENSE INCOME
E-FIELD MANIPULATION IP and
SURFACE CHEMISTRIES IP
F-1
<PAGE> 39
EXHIBIT G
LICENSE AND OPTION AGREEMENT
G-1
<PAGE> 1
EXHIBIT 10.9
CONFIDENTIAL TREATMENT
GENOMETRIX INCORPORATED HAS REQUESTED THAT
THE MARKED PORTIONS OF THIS DOCUMENT BE
ACCORDED CONFIDENTIAL TREATMENT PURSUANT TO
RULE 406 UNDER THE SECURITIES ACT OF 1933,
AS AMENDED.
GENOMETRIX INCORPORATED
GENOMIC SERVICES AGREEMENT
THIS AGREEMENT, dated as of March 3, 2000, (the "Effective Date") is
entered into by GENOMETRIX INCORPORATED, a DELAWARE corporation with its
principal place of business at 2700 Research Forest Drive, The Woodlands, TX,
77381 ("Genometrix") and PROCTER & GAMBLE PHARMACEUTICALS, INC., an Ohio
corporation with its principal place of business at 8700 Mason-Montgomery Road,
Mason, OH 45040 ("Customer").
1. DEFINITIONS.
1.1 "CUSTOMER AFFILIATE" means any individual or entity directly or
indirectly under the control of Customer. For purposes of this Section 1.21,
"control" means (i) the direct or indirect ownership of fifty percent (50%) or
more of the outstanding voting securities of an entity, or (ii) the right to
receive fifty percent (50%) or more of the profits or earnings of an entity, or
(iii) such other relationship as in fact results in actual control over the
management, business and affairs of an entity, shall be deemed to constitute
control.
1.2 "CUSTOMER ARRAY FABRICATION REAGENTS" shall mean any synthetic
polynucleotide DNA reagents that are provided by Customer to Genometrix for use
in the preparation of a Custom VistaArray(TM) for either expression or
polymorphism analysis in a manner that is consistent with specifications
determined by Genometrix.
1.3 "CUSTOMER EXPRESSION REAGENTS" shall mean any reagents that are
provided by Customer to Genometrix for use in the preparation of VistaArray(TM)
Targets by Genometrix. Customer Expression Reagents include tissue samples,
total RNA, and mRNA.
1.4 "CUSTOMER GENOTYPING REAGENTS" shall mean any reagents that are
provided by Customer to Genometrix for the preparation of VistaArray(TM) Targets
by Genometrix. Customer Genotyping Reagents include tissue samples, blood
samples, and DNA.
1.5 "CUSTOM VISTAARRAY(TM)" means a VistaArray(TM) fabricated using
genes and reagents specified by Customer and provided by Customer, or both
Customer and Genometrix.
1.6 "EXPRESSARRAY(TM)" means a VistaArray(TM) designed to enable
analysis of gene expression from a sample of either mRNA or DNA that has been
labeled appropriately.
1.7 "GENOMETRIX ARRAY FABRICATION REAGENTS" shall mean any synthetic
polynucleotide DNA reagents of Genometrix that are used in the preparation of
VistaArrays(TM).
1.8 "GENOVISTA(TM) SOFTWARE" means the Genometrix software programs
useful for (a) managing the fabrication of VistaArrays(TM), (b) using the
VistaArrays(TM), and (c) analyzing image data and/or electronically storing,
manipulating, visualizing or analyzing VistaArray(TM) Expression Data and/or
VistaArray(TM) Genotype Data.
1.9 "MORPHARRAY(TM)" means a VistaArray(TM) designed to enable
analysis of polymorphisms or other variations from a sample of DNA that has been
labeled appropriately.
1.10 "STANDARD VISTAARRAY(TM)" means a VistaArray(TM) fabricated using
genes and reagents specified and provided solely by Genometrix.
1.11 "TARGET PREPARATION SERVICES" means preparation by Genometrix of
VistaArray(TM)
1.
<PAGE> 2
Targets using Genometrix specified procedures and/or VistaArray(TM) Technology.
1.12 "THIRD PARTY" means any entity that is not a party to this
Agreement and is not an Affiliate of a party to this Agreement.
1.13 "VISTAARRAY(TM)" means a microarray having a plurality of
site-specific elements placed on a proprietary substrate in a specified format.
VistaArray(TM) shall include both Custom VistaArrays(TM) and Standard
VistaArrays(TM).
1.14 "VISTAARRAY(TM) FABRICATION SERVICES" means fabrication by
Genometrix of Custom VistaArrays(TM).
1.15 "VISTAARRAY(TM) ELEMENT" means a single sample of synthetic
nucleic acid DNA placed at a designated location on a VistaArray(TM).
1.16 "VISTAARRAY(TM) EXPRESSION DATA" means data generated that
indicates the expression of the genes represented by the VistaArray(TM) Elements
on an ExpressArray Array.
1.17 "VISTAARRAY(TM) EXPRESSION SERVICES" means the processing of
samples, and application of processed samples to VistaArrays(TM), and the
analysis of the VistaArrays(TM) for the purposes of assessing the expression
levels of genes represented on the VistaArrays(TM).
1.18 "VISTAARRAY(TM) GENOTYPE DATA" means data generated that indicates
the DNA makeup of a particular site or sites on genes represented by the
VistaArray(TM) Elements on a MorphArray(TM) Array.
1.19 "VISTAARRAY(TM) GENOTYPING SERVICES" means the processing of
samples, and application of processed samples to VistaArrays(TM), and analysis
of the VistaArrays(TM) for the purposes of assessing specific nucleotide
information at specific locations within genes represented on the
VistaArrays(TM).
1.20 "VISTAARRAY(TM) PLATE" means a plate or surface containing a
plurality of VistaArrays(TM). The plate has a proprietary surface in a format
specified by Genometrix. Multiple identical or different VistaArrays(TM) may be
contained within a single plate.
1.21 "VISTAARRAY(TM) SERVICES" means one or more of the following:
VistaArray(TM) Fabrication Services, VistaArray(TM) Expression Services,
VistaArray(TM) Genotyping Services and/or related services for sample
preparation, processing, imaging, and analysis.
1.22 "VISTAARRAY(TM) TARGETS" means appropriately labeled DNA or cDNA
materials for hybridization with a VistaArray(TM). VistaArray(TM) Targets may be
made by Customer or by Genometrix using specified procedures.
1.23 "VISTAARRAY(TM) TECHNOLOGY" means all technology, including but
not limited to, all inventions, processes, procedures, protocols, know-how,
algorithms, biological materials, chemical materials, software, hardware, and
information that is owned or controlled by Genometrix and which is: (a) utilized
to perform the VistaArray(TM) Services, or (b) utilized to develop, make, have
made, use, sell or import VistaArrays(TM), or (c) utilized to develop, make,
have made, use, sell or import the GenoVista Software and/or is incorporated in
or is a component of the GenoVista Software. VistaArray(TM) Technology includes,
without limitation, the Genometrix Array Fabrication Reagents, VistaArrays(TM)
and the GenoVista Software.
1.24 VISTAARRAY DATA" means collectively VistaArray Expression Data and
VistaArray Genotype Data.
2. PROJECT INITIATION AND PAYMENT.
2.1 The Pricing and Deliverables Form attached as Exhibit A details
the specific VistaArray(TM) Services and GenoVista(TM) Software that Customer
may obtain, purchase or license, as the case may be, under this Agreement.
2.2 Customer may order the VistaArray(TM) Services included in Exhibit
A by submitting to Genometrix a VistaArray fabrication request and completing a
wire transfer for the appropriate amount to an account specified by Genometrix.
Any purchase order submitted to Genometrix shall be governed exclusively by the
terms and conditions of this Agreement.
2.
<PAGE> 3
CONFIDENTIAL MATERIAL OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
3. PERFORMANCE OF VISTAARRAY(TM) SERVICES.
3.1 Customer shall prepare, at Customer's expense, the relevant
Customer Array Fabrication Reagents, Customer Expression Reagents, Customer
Genotyping Reagents, or VistaArray(TM) Targets using specified protocols and
quality control procedures provided by Genometrix. Customer shall provide such
reagents to Genometrix according to a mutually determined schedule as set forth
on Exhibit A, to allow Genometrix sufficient time to perform the VistaArray(TM)
Services identified on Exhibit A and to be provided under this Agreement. Any
such protocols or quality control procedures provided to Customer by Genometrix
pursuant to this Agreement shall be the Confidential Information of Genometrix,
and shall be treated in accordance with the provisions of Section 8.
3.2 Genometrix shall provide training for Customer's personnel to
enable efficient utilization of VistaArray(TM) Expression Data or VistaArray(TM)
Genotype Data, for the number of days set forth on Exhibit A.
3.3 Upon the reasonable request of Customer, Genometrix will provide
Customer with periodic written reports of the status of the performance of the
VistaArray(TM) Services to be provided by Genometrix under this Agreement.
Customer and Genometrix researchers will jointly determine the format of the
report.
3.4 Genometrix will provide a technical liaison to work directly with
the main contact designated by Customer.
3.5 VISTAARRAY(TM) FABRICATION SERVICES.
3.5.1 Customer shall provide a sufficient quantity of Customer Array
Fabrication Reagents to fabricate the desired number of Custom VistaArrays(TM).
With respect to Genometrix Array Fabrication Reagents, Genometrix will provide
sufficient quantities of Genometrix Array Fabrication Reagents for fabrication
of the desired Custom VistaArrays(TM).
3.5.2 Customer Array Fabrication Reagents shall be provided in 96-well
plates. ******* ************, ** *********, ** ******** ** **** ** ***********
*********** ******** and will be performed by Genometrix.
3.5.3 For each Custom VistaArray(TM) fabricated by Genometrix for
Customer pursuant to this Agreement, Genometrix may, at its discretion and at
Genometrix's sole expense, add VistaArray(TM) Elements made using the Genometrix
Array Fabrication Reagents that may serve as quality control, comparative
analysis, and sensitivity calibration standards.
3.5.4 The number of Custom VistaArrays(TM) ordered in any single batch
shall be no less than ***.
3.5.5 In order to ensure appropriate yield, Genometrix may, at its own
expense, fabricate more Custom VistaArrays(TM) than the amount ordered by
Customer. However, except as provided in section 3.5.4, Customer shall only be
billed for the number of VistaArrays(TM) actually ordered by Customer. ***
****** ************* ***** ** ********* ** ********** ******* *** **** *****
********** *** ********* *** ********** ************ *********** *********
********* ** ********.
3.5.6 Customer Array Fabrication Reagents will be stored in secure
Genometrix facilities until Genometrix performs the VistaArray(TM) Fabrication
Services. All VistaArray(TM) Fabrication Services will be performed at
Genometrix laboratories. All Customer Array Fabrication Reagents in Genometrix's
possession will be returned to Customer at Customer's request and expense within
30 days of Customer's written request.
3.5.7 Customer shall provide Genometrix with a quarterly forecast of
Customer's demand for Custom VistaArrays(TM) and all VistaArray(TM) Services for
the immediately following calendar quarter. Such forecasts will represent a
reasonable estimate of Customer's requirements for Custom VistaArrays(TM), and
shall be provided to Genometrix at least thirty (30) days in advance of the
quarter in which the VistaArray(TM) Fabrication Services will be provided.
3.
<PAGE> 4
CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
3.5.8 The standard time required for the fabrication of a standard
order of Custom VistaArrays(TM) (defined to be between *** and ****** arrays) is
********** **** business days following receipt of Customer Array Fabrication
Reagents in sufficient amounts and meeting Genometrix quality standards. It is
expected that provision of the VistaArray(TM) Fabrication Services, will, in
most instances be completed within the above-noted standard time periods.
However, if Genometrix reasonably determines that Customer's forecast
requirements cannot be handled on such standard schedule, Genometrix shall,
within one (1) month of receipt of the Customer's forecast, provide Customer
with notice of any non-standard delivery schedule; provided, however, that any
non-standard delivery schedule is subject to the mutual agreement of Customer
and Genometrix.
3.5.9 In the case of the provision of VistaArray(TM) Fabrication
Services for greater than ****** Custom VistaArrays(TM), Customer shall notify
Genometrix at least ten (10) business days in advance of the standard request
schedule set forth in Section 3.5.8 above. Where such advance notification has
not been provided, or where the quarterly forecast has not been provided, or
where Customer's demand exceeds Customer's quarterly forecast by ***** *******
***** ** ****, Genometrix will make reasonable efforts to provide the
VistaArray(TM) Fabrication Services in a timely manner.
3.6 VISTAARRAY(TM) TARGET PREPARATION SERVICES.
3.6.1 Customer must provide, at its own expense, a sufficient quantity
of Customer Expression Reagents or Customer Genotyping Reagents to react with
the number of VistaArrays(TM) that have been ordered by Customer. Genometrix
shall provide Target Preparation Services to make sufficient VistaArray(TM)
Targets from Customer Expression Reagents or Customer Genotyping Reagents.
3.6.2 VistaArray(TM) Targets and/or Customer Expression Reagents and/or
Customer Genotyping Reagents will be stored in Genometrix facilities until
Genometrix performs the VistaArray(TM) Services. All such VistaArray(TM) Targets
or Customer Expression Reagents or Customer Genotyping Reagents in Genometrix's
possession **** ****** ** *** ********* ****** *** **** ***** ********** ***
********* *** ************ ******** * ** **** ******** ** ******** ** **********
******* *** ******* ****** ****** **** **** ** *********** ******* *******.
3.7 All consumed VistaArrays(TM) in Genometrix's ********** **** **
********* ****** *** **** ***** ********** *** ********* *** ************
********.
4. REPORTING AND OWNERSHIP OF VISTAARRAY(TM) DATA.
4.1 If Genometrix is performing VistaArray(TM) Expression Services or
VistaArray(TM) Genotyping Services, the standard time required for Genometrix to
report VistaArray(TM) Expression Data or VistaArray(TM) Genotype Data to
Customer, as the case may be, is ******* **** business days following receipt
from Customer or manufacture by Genometrix of sufficient VistaArray(TM) Targets
meeting Genometrix's quality standards.
4.2 If Genometrix is performing VistaArray(TM) Fabrication Services
as well as VistaArray(TM) Expression Services or VistaArray(TM) Genotyping
Services, the standard time required for Genometrix to report VistaArray(TM)
Expression Data or VistaArray(TM) Genotyping Data is ******* **** business days
after the later of: (a) the end of the ****** fabrication period referred to in
Section 3.5.8, or (b) the receipt from Customer or manufacture by Genometrix of
sufficient VistaArray(TM) Elements meeting Genometrix quality standards.
4.3 Genometrix will provide Customer with VistaArray(TM) Expression
Data or VistaArray(TM) Genotype Data through an Internet-based virtual private
network or other mutually agreeable format as detailed in Exhibit A.
4.4 Customer shall own all VistaArray(TM) Expression Data generated
by Genometrix on its behalf pursuant to this Agreement; provided, that, Customer
and its Affiliates shall use
4.
<PAGE> 5
CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
the VistaArray(TM) Data solely for their respective internal research and
development purposes.
4.5 *********** ***** *** *** *** ************ **** ***** ** ********
*** *** ******* ***** **** *** *********** ** *** *********** ***** ****
********** * *** ***** *** ********* ** ******** ********** ************ **** **
*** ***** ***** ****** ************ ********** ** ** ** ** ********. The
foregoing notwithstanding, in no event shall Genometrix be prevented from
providing any VistaArray(TM) Services, or making, selling and/or providing any
VistaArrays(TM), or any other services or products provided, incorporating or
based on the use of the VistaArray(TM) Technology or the GenoVista Software.
5. LICENSE AND DELIVERY OF GENOVISTA(TM) SOFTWARE
Access to the GenoVista Software, or any components thereof, is hereby
granted according to the following terms:
5.1 The GenoVista Software and display screens are protected by
copyright, patent, trade secret and other intellectual property laws. Genometrix
hereby grants to Customer and its Affiliates a non-exclusive, non-transferable
license to use the GenoVista Software solely for the following permitted
purposes at the facilities of Customer or its Affiliates: (a) to send requests
for VistaArray(TM) Services (and related information) to Genometrix; (b) to
receive VistaArray(TM) Expression Data and/or VistaArray(TM) Genotype Data, as
applicable and in accordance with this Agreement; and (c) to facilitate
Customer's analysis of the VistaArray(TM) Expression Data and/or VistaArray(TM)
Genotype Data. Customer shall not copy such software or display screens, nor
shall Customer reverse engineer, decompile or disassemble the GenoVista Software
or display screens or any component thereof. The GenoVista Software embodies
trade secrets of Genometrix that are considered the Confidential Information of
Genometrix and are subject to the confidentiality provisions of Section 8
hereof.
5.2 Any access to or use of the GenoVista Software for purposes in
addition to the purposes set forth in this Agreement, or any access to databases
or other software of Genometrix in addition to the GenoVista Software, whether
during the Term of this Agreement or thereafter, shall be provided only pursuant
to a separate written agreement between Genometrix and Customer.
5.3 Genometrix reserves the right to provide periodic updates and
patches to the GenoVista Software directly or through an internet connection.
5.4 Any inventions, discoveries, ideas, conceptions, technical data,
programs, algorithms, whether patentable or not, relating to the GenoVista
Software, an improvement thereof or the use thereof, created, discovered,
identified or reduced to practice, in whole or in part, by Customer or its
Affiliates during the Term (as defined in Section 10.1) (hereinafter "Software
Technology"), shall be promptly disclosed to Genometrix, and Customer shall
promptly assign to Genometrix its entire right, title and interest in and to
such Software Technology. At any time during or after the Term of this
Agreement, Customer agrees that it will fully cooperate with Genometrix, its
attorneys and agents, in the preparation and filing of all papers and other
documents as may be required to perfect Genometrix's rights in and to any of
such Software Technology, including, but not limited to, joining in any
proceeding to obtain letters patent, copyrights, trademarks or other legal
rights of the United States and of any and all other countries on such Software
Technology; provided, that, Genometrix will bear the expense of such
proceedings.
6. PAYMENTS.
6.1 Customer will pay Genometrix according to the terms set forth in
Exhibit A. The initial payment shall be due upon completion by Genometrix of the
array design and validation activities identified in Exhibit A.
6.2 All other amounts payable under this Agreement will be invoiced to
Customer and will be due within thirty (30) days after the date of Customers
receipt of the invoice.
5.
<PAGE> 6
6.3 Custom VistaArrays(TM) will be invoiced to Customer once they are
fabricated, pass Genometrix quality control procedures, and are stored in
Genometrix facilities prior to performing the applicable VistaArray(TM) Service
6.4 Standard VistaArrays(TM) will be invoiced to Customer once they are
stored in Genometrix facilities at Customer's request prior to performing
VistaArray(TM) Services.
6.5 All transportation and insurance costs shall be paid by Customer
and will be set forth separately on the invoice submitted to Customer.
6.6 All fees payable under this Section 6 shall exclude any applicable
sales, use or other taxes, import or export fees, and other charges imposed on
the delivery, license or use of the VistaArray(TM) Genotype Data, the
VistaArray(TM) Expression Data or the GenoVista Software or any other
VistaArray(TM) TechnolOgy by Customer. All such amounts (and any related
interest or penalties) will be paid by Customer to the appropriate governmental
authority or, if Genometrix is required under law to collect and pay any such
taxes or fees, such amounts will be invoiced to Customer. Customer will provide
to Genometrix a sales tax exemption certificate and Customer agrees that it is
responsible for paying any sales taxes assessed by the State of Ohio on all
services provided by Genometrix. Customer will self assess these taxes and pay
the State of Ohio directly and will not be billed for these taxes by Genometrix.
7. INTELLECTUAL PROPERTY RIGHTS.
7.1 Except as expressly provided in Section 4.4, Section 5, and Section
9 of this Agreement, nothing in this Agreement shall be construed as conferring
on Customer any rights to the VistaArray(TM) Technology, the GenoVista Software,
the VistaArray(TM) Expression Data or the VistaArray(TM) Genotype Data, or
conferring on either party a license or option to license any information,
discoveries, inventions, or intellectual property rights owned or controlled by
the other party.
7.2 Except as provided in Sections 5.4 and 7.3, nothing herein shall be
construed as conferring on Genometrix any license or other rights to any
Customer Array Fabrication Reagents, Customer Genotyping Reagents, Customer
Expression Reagents or under any of Customer's patent applications or patents
relating thereto, all of which shall remain the sole property of Customer.
7.3 Except as provided in Section 5 with respect to the GenoVista
Software, and except as otherwise provided in Section 7.4 below, any invention,
development or discovery, whether or not patentable, made during Term of this
Agreement or through use of the VistaArray(TM) Technology (hereinafter "New
Technology") shall be owned according to inventorship of the relevant patents or
patent applications, and inventorship shall be determined under the patent laws
of the United States. New Technology invented solely by employees or others
acting on behalf of Customer shall be owned by Customer. New Technology invented
solely by employees or others acting on behalf of Genometrix shall be owned by
Genometrix, and inventions invented solely by employees or others acting on
behalf of Customer together with employees or others acting on behalf of
Genometrix shall be owned jointly by Genometrix and Customer. Except as provided
in Section 7.4 below, Genometrix shall have, and Customer hereby grants to
Genometrix, a non-exclusive, world-wide, sublicensable, fully-paid irrevocable
license under its interest in any New Technology which is an improvement to the
VistaArray(TM) Technology.
7.4 The provisions of Section 7.3 notwithstanding, the parties
acknowledge and agree that Genometrix's performance of VistaArray(TM) Services
for Customer hereunder shall not be construed as constituting inventorship with
respect to any inventions or discoveries made by or on behalf of Customer
through the use of the VistaArray(TM) Expression Data or the VistaArray(TM)
Genotype Data developed by Genometrix through the use of Customer Expression
Reagents or Customer Array Fabrication Reagents.
8. CONFIDENTIALITY.
8.1 It is contemplated that each party will disclose certain of its
confidential and proprietary information to the other party pursuant to the
conduct of activities under this Agreement. As used in this Agreement, the term
"Confidential Information" means any technical, scientific or business
information furnished by one party (the "Disclosing Party") to the other party
(the "Receiving Party") in connection with this Agreement, regardless of whether
such information is specifically designated as confidential and regardless of
whether
6.
<PAGE> 7
such information is in written, oral, electronic, or other form. Such
Confidential Information may include, without limitation, trade secrets,
know-how, inventions, technical data, operational protocols, sample processing
protocols, data analysis algorithms, research results or specifications, testing
methods, clinical trial data, information regarding proprietary compounds or
agents, business or financial information, research and development activities,
product and marketing plans, and customer and supplier information.
8.2 During the Term of this Agreement and thereafter, Genometrix will
hold in strict confidence and shall not disclose or use for any purpose not
permitted by this Agreement any Confidential Information received from Customer
or any Custom VistaArray(TM) or VistaArray(TM) Expression Data or VistaArray(TM)
Genotype Data generated by Genometrix on behalf of Customer pursuant to this
Agreement.
8.3 During the term of this Agreement and thereafter, Customer will
hold in strict confidence and shall not disclose or use for any purpose not
permitted by this Agreement any Confidential Information received from
Genometrix pursuant to this Agreement (hereinafter "Genometrix Confidential
Information"). Genometrix Confidential Information includes, without limitation
the VistaArray(TM) Technology and the GenoVista Software and any information
related thereto, and any protocols, procedures, specifications or quality
standards provided by Genometrix to Customer.
8.4 The obligations of confidentiality and non-use set forth in
Sections 8.2 and 8.3 above shall not apply to information which the Receiving
Party can demonstrate by written records: (a) was in the public domain at the
time of its receipt by the Receiving Party; (b) entered the public domain after
receipt thereof by the Receiving Party other than through a breach of this
Agreement by the Receiving Party, (c) was known to the Receiving Party at the
time of receipt from the Disclosing Party; or (d) is subsequently developed by
the Receiving Party independently and without breach of any obligation of
confidentiality or non-use under this Agreement; or (e) is disclosed to the
Receiving Party on a non-confidential basis by a third party having the right to
make such disclosure without breach of any confidentiality obligation; or (f) is
legally required to be disclosed by the Receiving Party; provided, that, (i)
prior written notice is given to the Disclosing Party in sufficient time to
enable it to seek a protective order with respect to such information; and (ii)
the Receiving Party shall only disclose that information that it is advised by
its legal counsel it is legally obligated to disclose, regardless of whether the
Disclosing Party seeks a protective order.
8.5 The provisions of this Section 8 shall survive the expiration or
termination of this Agreement.
9. PUBLICATIONS AND DISCLOSURES. Customer retains all publication rights
to VistaArray(TM) Data provided to or generated by Customer pursuant to this
Agreement; provided, that, Customer shall not publish or otherwise disclose the
confidential or proprietary information of Genometrix or the VistaArray(TM)
Technology without obtaining the prior written consent of Genometrix. Customer
shall acknowledge the contribution of Genometrix in any such publication or
other disclosure. Customer shall provide Genometrix with a copy of any such
disclosure at least thirty (30) days prior to such disclosure by Customer.
During such thirty (30) day period, Genometrix shall have the right to review
the publication to confirm that it does not contain any Confidential Information
of Genometrix, and if Genometrix notifies Customer within such thirty (30) day
period that the proposed disclosure does contain the Confidential Information of
Genometrix, then Customer shall not publish or otherwise disclose the disclosure
until such Confidential Information of Genometrix has been removed therefrom.
Genometrix shall have the right to disclose publicly that it is performing
VistaArray(TM) Services for Customer. Genometrix will provide a copy of the
public announcement prior to release for review by Customer.
10. TERM; TERMINATION.
10.1 The term of this Agreement shall commence upon the Effective Date
and expire at the end of the Access Term as defined in Exhibit A, unless earlier
terminated according to the provisions of this Section 10 (hereinafter the
"Term").
7.
<PAGE> 8
10.2 Customer may terminate this Agreement for material breach by
Genometrix (excluding force majeure events), if Genometrix fails to cure such
breach within 45 days after Genometrix's receipt of written notice thereof from
Customer.
10.3 Genometrix may terminate this Agreement if Genometrix fails to
receive any payment when due from Customer. Such termination shall be effective
thirty (30) business days after notice to Customer by Genometrix that such
payment has not been received, unless Customer has made such payment within such
30-day notice period. Upon any such termination, Genometrix will be entitled to
retain any fees paid by Customer prior to the termination date for services
already performed and for custom products that have already been fabricated.
10.4 Either party may, in addition to any other remedies available to
it in law or in equity, terminate this Agreement with no prior notice if the
other party shall have become insolvent or bankrupt, or shall have made an
assignment for the benefit of creditors, or there shall have been appointed a
trustee or receiver of the other party for all or a substantial part of its
property, or any case or proceeding shall have been commenced or other action
taken by or against the other party in bankruptcy or seeking reorganization,
liquidation, dissolution, winding-up, arrangement, composition or readjustment
of its debts or any other relief under any bankruptcy, insolvency,
reorganization or other similar act or law of any jurisdiction now or hereafter
in effect.
10.5 RETURN OF CONFIDENTIAL INFORMATION, TECHNOLOGY AND SOFTWARE. Upon
the expiration or termination of this Agreement, the Receiving Party shall
return to the Disclosing Party all of its Confidential Information, and, in
particular, any VistaArray(TM) Technology or GenoVista Software in the
possession of Customer shall be returned to Genometrix within 60 days, and
Customer shall have no continued rights of use or access to the GenoVista
Software, the VistaArray(TM) Software, the VistaArray(TM) Technology or any
other Confidential Information of Genometrix.
10.6 SURVIVAL OF CERTAIN PROVISIONS. Any termination of this Agreement
shall be without prejudice to the rights of any party then accruing or otherwise
accruing under this Agreement. The provisions of Sections 5.4,7, 8, 9, 10.5,
10.6, 11 and 12 shall survive the expiration or termination of this Agreement.
11. WARRANTY AND DISCLAIMER; LIMITATION OF LIABILITY.
11.1 WARRANTY AND DISCLAIMER. Except as expressly set forth in this
Agreement, Genometrix makes no other warranties, express or implied, regarding
the VistaArray(TM) Services, the GenoVista Software, the Vista Array Technology
or any data or other products, services or documents provided to Customer under
this Agreement and specifically disclaims all express or implied warranties of
merchantability, fitness for a particular purpose, and non-infringement of
third-party rights. Genometrix makes no warranties of any kind hereunder
regarding the VistaArray(TM) Expression Data or the VistaArray(TM) Genotype
Data. No information or advice concerning the VistaArray(TM) Services or the
VistaArray(TM) Expression Data or the VistaArray(TM) Genotype Data given by
Genometrix's employees or agents, whether oral or written, will be construed as
a warranty or will expand the scope of the limited warranty stated above, and
Customer is not entitled to rely on any such information or advice.
11.2 LIMITATION OF LIABILITY. IN NO EVENT WILL EITHER PARTY BE LIABLE
FOR ANY CONSEQUENTIAL, INDIRECT, EXEMPLARY, SPECIAL OR INCIDENTAL DAMAGES,
INCLUDING ANY LOST DATA AND LOST PROFITS, ARISING FROM OR RELATING TO THIS
AGREEMENT OR THE PROVISION OF ANY DATA OR SERVICES HEREUNDER, OR THE USE OF THE
GENOVISTA SOFTWARE. GENOMETRIX WILL HAVE NO LIABILITY HEREUNDER WITH RESPECT TO
ANY DATA, THIRD-PARTY SOFTWARE, OR EQUIPMENT USED BY CUSTOMER.
8.
<PAGE> 9
11.3 Customer shall indemnify, defend and hold harmless Genometrix from
any and all damages, costs or expenses arising out of the use of any products,
services, data or information provided to Customer under this Agreement, except
to the extent caused by the negligence, recklessness or intentional misconduct
of Genometrix.
11.4 Genometrix shall indemnify, defend and hold harmless Customer from
any and all damages, costs or expenses arising out of any third party claim of
patent infringement relating to the VistaArray(TM) Technology used in the
performance of this Agreement or arising from the performance of VistaArray(TM)
Services by Genometrix hereunder, except to the extent caused by the negligence,
recklessness or intentional misconduct of Customer.
12. GENERAL TERMS.
12.1 Customer shall comply with all applicable export and import
control laws and regulations with regard to the GenoVista Software, the
VistaArray(TM) Expression Data and the VistaArray(TM) Genotype Data, and, in
particular, Customer will not export or re-export such software or data without
all required United States and foreign government licenses. Customer agrees to
indemnify and hold Genometrix harmless from and against any violation of such
laws or regulations by Customer or any of its agents, officers, directors, or
employees.
12.2 Customer will permit an agent appointed by Genometrix and
acceptable to Customer to review Customer's relevant records and inspect
Customer's facilities to ensure compliance with this Agreement; provided, that,
such agent has entered into a suitable confidentiality agreement with Customer.
Genometrix will give Customer at least forty-five (45) days advance notice of
any such inspection and will conduct the same during normal business hours in a
manner that does not unreasonably interfere with Customer's normal operations.
Genometrix's agent shall only report to Genometrix the results of such
inspection (i.e., whether or not Customer is in compliance with its obligations
under this Agreement), and shall not disclose to Genometrix any of Customer's
confidential or proprietary information provided to it or to which it may have
access during the conduct of the inspection.
12.3 This Agreement may not be assigned by either party without the
prior written consent of the other party, except that each party may assign this
Agreement and its rights, obligations and interests hereunder, in whole or in
part, to any purchaser of all or substantially all of its assets in the line of
business to which this Agreement pertains, or to any successor corporation
resulting from any merger or consolidation of such party with or into such
corporation.
12.4 Any notice required under this Agreement shall be delivered to the
addresses below:
If to Genometrix:
Genometrix Incorporated
2700 Research Forest Drive
The Woodlands, TX 77381
If to Customer:
Proctor & Gamble Pharmaceuticals, Inc.
8700 Mason-Montgomery Road
Mason, OH 45040
12.5 The United Nations Convention on Contracts for the International
Sale of Goods does not apply to this Agreement.
12.6 All waivers must be in writing; any waiver or failure to enforce
any provision hereof on one occasion will not be deemed a waiver of any other
provision or of such provision on any other occasion.
12.7 If any provision hereof is unenforceable, the remaining provisions
will nevertheless remain in full force and effect.
12.8 This Agreement supersedes any prior or contemporaneous agreement
or communication between the parties regarding such services and may be amended
or supplemented only by a written document signed by both parties.
9.
<PAGE> 10
IN WITNESS WHEREOF, the parties hereby execute this Agreement, which is
deemed effective as of the Effective Date.
<TABLE>
<S> <C>
GENOMETRIX INCORPORATED CUSTOMER
By: Mitchell D. Eggers By: D.W. Axelrod, M.D., Ph.D.
------------------ -------------------------
Title: Chief Executive Officer Title: Director, Discovery Projects & Biological Sciences
----------------------- --------------------------------------------------
</TABLE>
10.
<PAGE> 11
CONFIDENTIAL MATERIAL OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
EXHIBIT A
PRICING AND DELIVERABLES FORM
Genometrix will provide the following products and services:
<TABLE>
<CAPTION>
ACCESS
PRODUCT PARAMETERS/COMMITMENTS TERMS
<S> <C> <C>
GENOVISTA(TM) PROGRAM Expression Program
Vista Array(TM) Expression - Design, fabrication and validation of ExpressChip
Array Services arrays for expression analysis of *** genes with ********
VistaArray Fabrication Services.
- Complete processing and analysis of experimental **** ***
samples on custom VistaArray microarray using Target ******
Preparation Services for a minimum of *** samples
- Installation and evaluation of VistaExpress (Beta) ******** **
module upon release. **********
</TABLE>
Access Terms: ** ****** from effective date of Genomics Services Agreement.
ARRAY SERVICES USAGE FOR THE GENOVISTA PROGRAM:
- - Genometrix will:
- Assign a Client Business Manager at Genometrix to work
directly with Procter & Gamble to facilitate the GenoVista
Program.
- Design, fabricate, and validate custom arrays using standard
VistaArray Fabrication Service procedures. A payment of
******** will be due upon design, fabrication and validation
of initial batch of VistaArray microarrays as determined by
standard Genometrix evaluation procedures. Fees for
fabrication of requested quantities of VistaArray will be due
upon completion of fabrication and standard QC validation.
- Provide to Procter & Gamble data in predefined standard files
and, when available, in the appropriate GenoVista module.
Standard turn around for data from samples shipped according
to specifications is ** ******* *****.
- - Procter & Gamble will:
- Procter & Gamble will designate a main contact person for the
pilot program. This individual will be authorized by Procter &
Gamble to provide appropriate forecasts and approve new
projects and services requested from Genometrix under the
terms of the Agreement.
- Provide sequence data for VistaArray design. Standard turn
around for microarray design, fabrication, and validation is
** ******** ****.
- Supply experimental samples using Genometrix defined
procedures (to be provided after initiation of the Genomic
Services Agreement).
- Provide an array usage forecast as described in the Genomics
Services Agreement detailing design and quantities of each
VistaArray required. The mutually determined schedule for
delivery of services as identified in Section 3.1 of the
Agreement will be based on the forecast.
11.
<PAGE> 1
EXHIBIT 10.15
CONFIDENTIAL TREATMENT
GENOMETRIX INCORPORATED HAS REQUESTED THAT THE MARKED PORTIONS OF THIS DOCUMENT
BE ACCORDED CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 UNDER THE SECURITIES ACT
OF 1933, AS AMENDED.
CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
FIRST AMENDMENT TO LICENSE AND RESEARCH AGREEMENT
This First Amendment, dated March 20, 2000 (the "Amendment"), is
between Motorola, Inc., a Delaware corporation and Genometrix Incorporated, a
Delaware corporation and amends that certain License and Research Agreement (the
"Agreement") between MOTOROLA and GENOMETRIX dated July 2, 1999.
BACKGROUND
MOTOROLA and GENOMETRIX desire to amend the Agreement to better
accommodate certain changes in the marketplace and to better reflect the
original intention of the parties.
Accordingly, the parties agree as follows:
1. Definitions. All defined terms, unless assigned a specific meaning in this
Amendment, shall have the meaning set forth in the Agreement.
2. Sections 1.18 and 2.9. The term "*** *** format arrays" is deleted from
Section 1.18, the first sentence of Section 2.9, where the term is used twice,
and from the second sentence of Section 2.9, where the term is used once. In its
place, the term "*** ***** MICROARRAY" is substituted. In addition, the
following sentence is added at the end of Section 1.18:
"The term *** ***** MICROARRAY shall mean a device on which an array of
biomolecules have been or are intended to be immobilized (as in the case of a
blank array), whereby the biomolecules are immobilized in a ****** ******.
3. Section 2.1. As contemplated by Section 2.1, the parties shall extend the
SURFACE CHEMISTRIES RESEARCH PROGRAM until December 31, 2000. The parties shall
mutually agree upon an amended RESEARCH PLAN, a draft of which is attached as
Exhibit E-1. GENOMETRIX shall commit resources equivalent to at least ***** *
**** **** ********* employees to the SURFACE CHEMISTRIES RESEARCH PROGRAM for
the duration of the extended SURFACE CHEMISTRIES RESEARCH PROGRAM. MOTOROLA
shall pay GENOMETRIX ***** ******* ***** ******** ******* ******** for this
extension: *** ******* *** ***** ******** ******* ******** upon execution of
this Amendment and each of ****** * **** *** ******** ** ****; all subject to
the completion by GENOMETRIX of the relevant milestones set forth in the amended
RESEARCH PLAN.
4. Section 4. Section 4 is deleted in its entirely and replaced with the
following paragraph:
<PAGE> 2
CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
"MOTOROLA agrees, beginning January 1, 2001 and subject to its capacity
constraints, to provide to GENOMETRIX high density arrays (i.e. ******
****** **** **** *** ******** ******) employing the SURFACE CHEMISTRIES
technologies developed by the extended SURFACE CHEMISTRIES RESEARCH PROGRAM on
preferred terms. GENOMETRIX shall have the right to use such high density arrays
*** *** ******** ******** ********, *** ******** ******** ********** ** **
********* ******. The rights granted to GENOMETRIX in this Section 4 shall not
be transferred to a THIRD PARTY without the written permission of MOTOROLA. In
addition, MOTOROLA agrees to make GENOMETRIX a preferred provider of genomic
services, and GENOMETRIX agrees to provide to MOTOROLA ******** ********, ****
** *** ****** ******* ********, ** ********* *******."
5. Section 6.2. The following sentence is added at the end of Section 6.2:
"Notwithstanding MOTOROLA'S obligation to pay royalties to GENOMETRIX on NET
SALES of LICENSED PRODUCTS sold by MOTOROLA or its SUBSIDIARIES and covered by a
VALID PATENT CLAIM set forth in this Section 6.2 or Section 6.5, the parties
agree that any LICENSED PRODUCTS sold by MOTOROLA employing E-FIELD MANIPULATION
IP that also encompass any *** ****** TECHNOLOGY shall bear a single royalty of
***** ******* ** of NET SALES. *** ****** TECHNOLOGY is defined as the
proprietary ******* technology developed by and/or licensed to ******** *****
******* *** * ********** *********** *** and is further defined in the
Intellectual Property Agreement dated ***** ** **** ******* ******** *** ***.
The sentences immediately preceding this sentence, together with Paragraph
6.3(b) below, shall be effective only upon the execution of agreements between
Motorola and *** ******* *** *********** GENOMETRIX E-FIELD MANIPULATION IP and
*** ****** ** ***** *** ****** *** ***** *** *********
********* ** *** ******** ** ********** * ***** *********** **."
6. Section 6.3. Section 6.3 is deleted in its entirety and the following
paragraph is substituted.
"6.3 In consideration of the rights and licenses granted hereunder, MOTOROLA
shall pay GENOMETRIX ***** ******* *** of any SUBLICENSE INCOME received by
MOTOROLA in consideration for the grant of a sublicense under the GENOMETRIX
PATENTS. The foregoing notwithstanding, (a) in all cases the percentage of
SUBLICENSE INCOME payable by MOTOROLA to GENOMETRIX in consideration for the
grant of a sublicense under the GENOMETRIX PATENTS shall be ***** ** ** *******
**** *** amount owed by GENOMETRIX to MIT pursuant to the MIT AGREEMENT; (b) in
the case of SUBLICENSE INCOME received by MOTOROLA **** ***, (i) SUBLICENSE
INCOME shall include only cash consideration paid by *** ** ******** as part of
the grant of the sublicense, including but not limited to up-front license fees,
running royalties, milestone payments or development payments, as set forth in
the actual sublicense agreement between *** *** ******* and (ii) in addition to
any cash consideration paid by *** ** ******* (of which GENOMETRIX shall be
entitled to ***** ****** ***, the percentage of running royalties to be paid by
MOTOROLA to
2
<PAGE> 3
CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
GENOMETRIX on the NET SALES of E-FIELD PRODUCTS by *** ***** ** no less than ***
*** *** **** ****** *** of NET SALES of E-FIELD PRODUCTS by ***; and (c)
notwithstanding the foregoing and Exhibit F, in the event that MOTOROLA grants a
sublicense to ****** ** *** ******** for the field of E-FIELD MANIPULATION IP,
************* *** ****** ** *** ** ** ****** ****** ****** ****** **********
within ***** * ****** following the execution of this Amendment, MOTOROLA shall
pay to GENOMETRIX SUBLICENSE INCOME of a pre-paid license fee of ****** ******,
***** ******* *** ***** ******* ******* ********, and (ii) an annual running
royalty of the greater of ***** ** ** *** ***** ** ******** ******** ** *******
** ***** ******* ******* *** ******** ******* ********. MOTOROLA agrees to
provide GENOMETRIX with advance written notice of and a copy of any such
sublicense agreements."
6. All other terms of the Agreement remain unchanged.
Authorized representatives of the parties have executed this Amendment.
Motorola, Inc. Genometrix Incorporated
By: /s/ Nicholas Naclario By: /s/ Mitchell Eggers
--------------------- -------------------
Nicholas Naclario Mitchell D. Eggers, Ph.D.
Title: Vice President and General Manager Title: Chief Executive Officer
By: /s/ Jonathan Meyer
------------------
Jonathan Meyer
Title: Senior Vice President,
Assistant General Counsel,
and Director of Patents, Trademarks and Licensing
3
<PAGE> 4
CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
EXHIBIT E-1
1. GOALS
- To develop a manufacturable polymer matrix with *** ******** *********
to which oligonucleotides can be attached in a cost-efficient manner.
- To develop protocols for SNP and expression analysis using the matrix
described above.
2. STAFFING
- Genometrix: ***** FTE
- Motorola: At ***** *** *** ******** ****** ******* ********
- Project coordinators: Motorola, ******* ****** Genometrix; ***
********
- Top-level responsibility: Motorola, ***** *****; Genometrix, ****
*****
3. TIME PERIOD
- One year with option to renew.
- Telephone conferences once a month.
- In-person meetings quarterly.
- Scientist to scientist communications weekly or more often, as needed.
4. DEFINITIONS (FOR THE PURPOSES OF THE FIRST YEAR)
- Manufacturable: Process capable of being integrated into a
high-throughput automated production line, similar to that proposed
for *** * ** *** **.
- Polymer Matrix: Modified polyacrylamide *** **** ** *****.
- ** ******* *********: ************, or another ******* ** *****
******* with a similar pH to ************.
- Oligonucleotide attachment: Preferably with the proprietary
*************** method developed by Motorola *** *******.
- Cost efficient: < *** per oligo per 150 nmol (order commitment >50,000
oligos).
- Protocols:
- Hybridization/wash cycle of < 1hr.
- SNP specificity of _______ (TBD).
- SNP sensitivity of _______ (TBD).
- Expression sensitivity of 1:300,000 (200 fM, 12 attomol).
5. RESEARCH TASKS
- Phase 1: Gen 1.5 (polyacrylamide *** **** ******* *** ***********)
- Limited number of experiments (platform to be discontinued).
Forms baseline data set for further experiments. Use *********
coupling pair.
- ** *********** into polymer. Prepare at Motorola under defined
conditions; compare with Genometrix *** ** ****. If the Motorola
and Genometrix pads are comparable, many of the experiments can
be done at Genometrix, without having to have slides made and
dispensed at Motorola. 4/1/00
4
<PAGE> 5
CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
- Determine equilibrium of hybridization with defined fragments
(time course study with fluorescent target). 6/1/00
- Determine what factors enhance hybridization: pH, concentration,
salts, detergents (must be taken into consideration with
requirements of *** ********).
- Completed by 6/1/00
- Phase 2: Gen 2 polyacrylamide *** ***** *********** **** ************
- Prepare ** ******* by:
1. Incorporating ****** ** at ********** ********* stage, or.+
2. Crosslinking ****** ** into finished ************.
- Test crosslinking of ********* with *********** ********.
- Compare coupling of *********** ***** and ****** ***** **.
- Determine sensitivity in ********* experiment.
- Do confocal microscopy to determine penetration of probe and
target into pads.+
- Determine limit to what size DNA or RNA can be migrated into ****
**** ** ******.
- Correlate results with results from ******** *** ****.
- Address problem of ****** ** expression assay (how to ensure that
low copy RNA finds it complement in pads).
- Study hybridization signal in ** ********** ** ****** ****.
Increased sensitivity is critical.
- Optimize ** *************, and *** composition to provide best
combination of affinity, selectivity, and hygridization rate.
- Completed by 9/1/00
- Phase 3: Gen 2 polyacrylamide *** ***** *********** **** *******
- Prepare polymer with ******* ******** ** ***** ** ********.
1. Incorporating ******; ******* at ********** *********
stage.+
2. Crosslinking ****** ** into ******** ************.
- Determine limit to what size DNA *** ******* *** ** migrated into
**** **** ** ******.
- Test crosslinking of ********* **** *** **************.
- Compare coupling of *********** ***** and ****** ***** to
******** **.
- Do confocal microscopy to determine penetration of probe and
target into pads.+
- Correlate results with results from ******** *** ****.
- Study hybridization signal in ** ********** ** ****** ****.
Increased sensitivity is critical.
- Completed by 12/15/00
+ indicates activities to be performed at Motorola.
5
<PAGE> 1
EXHIBIT 23.1
CONSENT OF INDEPENDENT ACCOUNTANTS
We hereby consent to the use in this Amendment No. 4 to the
Registration Statement on Form S-1 of Genometrix Incorporated (File No.
333-32584) of our report dated November 19, 1999, relating to the financial
statements of Genometrix Incorporated which appear in such Registration
Statement. We also consent to the reference to us under the heading "Experts"
in such Registration Statement.
/s/ PRICEWATERHOUSECOOPERS LLP
Houston, Texas
May 23, 2000
