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EXHIBIT
10.101
EXECUTION
COPY
LICENSE AGREEMENT
DIAGNOSTIC DEVELOPMENT BUSINESS
This
LICENSE AGREEMENT (the “ Agreement ”) is
entered into and effective as of December 14, 2007 (the
“ Effective Date ”), by and between Gene
Logic Inc. (“ Licensee ”), a Delaware
corporation, with a principal address at 50 West Watkins Mill
Road
Gaithersburg,
MD 20878, and Ocimum Biosolutions, Inc. (“
Purchaser ”), a Delaware corporation with a
principal address at 50 West Watkins Mill Road
Gaithersburg,
MD 20878 (each a “ Party ” and
collectively, the “ Parties ” to this
Agreement).
WHEREAS , contemporaneously herewith, Licensee and
Purchaser have consummated the transactions set forth in that
certain Asset Purchase Agreement (the “ Purchase
Agreement ”), dated as of October 14, 2007, by and among
Licensee, Purchaser and Ocimum Biosolutions (India) Limited, a
company incorporated under the Company Act, 1956, of the Republic
of India (“ Ocimum India ”), as amended by that
certain letter agreement made by and among Gene Logic, Purchaser
and Ocimum India dated December 12, 2007, whereby
Purchaser has acquired from Licensee certain assets, technologies
and other property used in the Business (as defined in the Purchase
Agreement); and
WHEREAS , as part of the aforementioned transaction,
Purchaser has agreed to grant a license to Licensee to certain of
the acquired intellectual property and technology for certain
defined purposes on the terms set forth below.
NOW, THEREFORE , in consideration of the undertakings of
the Parties in the Purchase Agreement, and the mutual covenants and
promises of the Parties set forth herein, and other good and
valuable consideration, the sufficiency of which is hereby
acknowledged, the Parties agree as follows, intending to be legally
bound:
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1. DEFINITIONS . In addition to any other terms
defined elsewhere in this Agreement, the following terms, for
purposes of this Agreement, shall have the following
meanings:
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1.1.
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“
Affiliate ” of a Person shall mean a Person that
directly or indirectly, through one or more intermediaries,
controls, is controlled by, or is under common control with, the
first mentioned Person, and their respective successors and
assigns. For the purposes of this definition, the term
“control” means (i) beneficial ownership of at least
fifty percent (50%) of the voting securities of a corporation or
other business organization with voting securities or (ii) a fifty
percent (50%) or greater interest in the net assets or profits or
interests of a partnership or other business organization without
voting securities.
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1.2.
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“
Business ” shall have the meaning ascribed to it in
the Purchase Agreement.
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1.3.
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“
Closing ” shall mean the effective date of the closing
by the Parties on the transactions contemplated in the Purchase
Agreement.
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1.4.
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“
Collaborator ” means any third party (a) with whom
Licensee or a Licensee Affiliate has a research, development or
commercialization agreement, or (b) who is a customer of Licensee
or a Licensee Affiliate or a party described in (a) above in
connection with a project or task where such party and Licensee or
a Licensee Affiliate are collaborating within the Diagnostic
Development Business, and their respective successors and
assigns.
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1.5.
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“Improvements ” shall mean improvements,
enhancements, and modifications to an invention, technology, trade
secret, or know-how.
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1.6.
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“
Information Assets ” shall have the meaning ascribed
to it in the Purchase Agreement, including the raw data and
Know-How related thereto, and any fixes, enhancements, updates,
upgrades, new versions and new releases thereof existing as of
Closing or otherwise acquired from or provided by Purchaser after
Closing, as well as all existing documentation therefor, but
excluding any third party proprietary data, third party proprietary
Know-How and third party proprietary software for which Purchaser
would have a contractual obligation to obtain consents for granting
the license contemplated by this Agreement, if such consent has not
been granted or the right to consent waived by the third
party.
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1.7.
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“
Intellectual Property Rights ” shall mean all rights
and entitlements recognized, vested, granted, available, or
existing anywhere in the world, whether through formal registration
or application or otherwise, to inventions, discoveries,
improvements, technologies, works of authorship, mask works,
information, and designs, including without limitation, patent
rights, copyrights, trade secret rights, trademark rights, database
rights, industrial property rights, moral rights, and registered
design rights, including the Licensed Patent Rights.
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1.8.
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“
Know-How ” shall mean know-how, information,
knowledge, SOPs (standard operating procedures), experience,
procedures, processes, methods, protocols, techniques, and
technical and scientific information relating to the Business that
is sold, transferred or conveyed by Licensee to Purchaser pursuant
to the transactions contemplated in the Purchase Agreement, whether
owned prior to Closing by Licensee or a Licensee Affiliate or
licensed or acquired by any of them from a third party, which is
used or useful in connection with the Retained Business, including
without limitation procedures and know-how for tissue and blood
storage, RNA isolation, RNA QC, target preparation and GeneChip
®
processing, published materials, and Intellectual
Property Rights that are not Registered IP and are included in the
Acquired Assets.
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1.9.
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“
Licensed Patents Rights ” shall mean all rights under
any disclosures, patents and patent applications assigned,
transferred or conveyed to Purchaser under the Purchase Agreement,
as set forth on Appendix One hereto, and all patents
resulting from such disclosures, applications, and reissuances,
reexaminations, divisionals, continuations and foreign counterparts
of any of the foregoing.
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1.10.
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“
Licensed Technology ” shall mean the Information
Assets, the Know-How, and the Intellectual Property Rights in or to
any of the foregoing.
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1.11.
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“
Person ” shall mean an individual, corporation,
company, partnership, association, trust, or any unincorporated
organization or group (within the meaning of Section 13(d)(3)
of the Exchange Act).
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1.12.
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“
Retained Business ” shall mean the Diagnostic
Development Business, as defined in the Purchase Agreement, as such
Retained Business is now or hereafter conducted.
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2.1.
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Grant . Subject to the terms and conditions of this
Agreement, Purchaser hereby grants to Licensee, and Licensee
accepts, ( A ) for a period of one year from the date of
Closing, the exclusive right and license to use the Licensed
Technology and the Licensed Patent Rights in the Retained Business,
including as needed the right to reproduce, create Improvements and
derivative works (the “ Exclusive License ”),
(B) the non-exclusive right and license to use the Licensed
Technology and the Licensed Patent Rights in the Retained Business
from and after the end of the Exclusive License, including as
needed the right to reproduce, create Improvements and derivative
works (the “ Retained Business Non-Exclusive License
”), and (C) the non-exclusive right and license to use the
Licensed Technology and the Licensed Patent Rights in all fields of
use outside of the Retained Business, including as needed the right
to reproduce, create Improvements and derivative works, subject to
any restrictions imposed by any non-compete agreement between the
Parties entered into in connection with the Purchase Agreement (the
“ Non-Exclusive License ”), in each of (A), (B)
and (C) above directly or through Licensee Affiliates, contractors
working for the account of Licensee or a Licensee Affiliate, and
Collaborators.
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2.1.1.
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The
grant of the Exclusive License entails that, as long as the
Exclusive License is in effect, Purchaser and Purchaser Affiliates
and any of their respective successors and assigns shall not,
directly or through others, sell, license, lease, lend, provide,
disclose, use or permit use of (whether directly or through a
service bureau or subscription arrangement) any part of the
Licensed Technology or the Licensed Patent Rights to or by any
Person who will use or license them for a business that competes
with any aspect of the Retained Business.
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2.1.2.
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All
the licenses are fully paid up, royalty-free, and
worldwide. The licenses are transferable as set forth in
Section 9.2 of this Agreement.
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2.1.3.
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The
Exclusive License, the Retained Business Non-Exclusive License and
the Non-Exclusive License are sublicensable as set forth in the
next sentence. Licensee may sublicense the licensed
rights granted in this Agreement above to a Licensee Affiliate, to
Collaborators for use in the collaboration with Licensee or a
Licensee Affiliate, to a third party to which an activity in the
regular course of business in connection with the Retained Business
has been outsourced, and to contractors to the extent working with
any of the foregoing for the activities described
above. Each sublicense shall expressly disclaim any
warranty, damages, or liability that may apply to Purchaser as the
owner of the Licensed Technology and Licensed Patent
Rights.
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2.1.4.
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The
licenses granted in Section 2.1 are subject to and restricted by
any limitations imposed by law or contract on the Licensed
Technology as it was transferred by Licensee to Purchaser as of
Closing, whether or not those limitations were fully disclosed on
the Purchase Agreement.
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2.1.5.
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With
respect to any issued patents that are now or in the future
encompassed in the definition of Licensed Patent Rights, the
license for each such patent shall expire on the earlier
of the expiration of the patent or the invalidation or cancellation
by final order of all claims in the patent. The
remaining aspects of the licenses granted in this Agreement with
respect to all other Licensed Technology and Licensed Patent Rights
shall remain in effect perpetually until or unless this Agreement
is terminated pursuant to its terms.
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2.1.6.
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The
license granted in Section 2.1 above does not require the physical
delivery of any materials, information, data, Know-How or
technology to Licensee. Licensee has the right to retain
and use in connection with the exercise of the rights granted
herein a copy of the embodiments of the Licensed Technology and the
Licensed Patent Rights that are in its possession or under its
control at Closing.
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2.1.7.
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THE
LICENSES GRANTED IN SECTION 2.1 ARE GRANTED ON AN AS IS BASIS, AND
PURCHASER MAKES NO WARRANTY, EXPRESS, IMPLIED OR STATUTORY IN THIS
AGREEMENT WITH RESPECT THERETO AND MAKES NO REPRESENTATION WITH
RESPECT TO THE VALIDITY OR ENFORCEABILITY OF THE LICENSED PATENT
RIGHTS WHETHER ANY PATENT WILL ISSUE, OR WHETHER ANY OF THE
LICENSED PROPERTY INFRINGES THE INTELLECTUAL PROPERTY RIGHTS OF ANY
THIRD PARTY.
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2.2.
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Covenant not to Sue . Purchaser hereby covenants to
Licensee that it will not, directly or through others, assert
against Licensee or Licensee Affiliates and their respective
successors and assigns permitted by this Agreement (collectively
the “ Licensee Parties ”), any Intellectual
Property Rights of Purchaser or Purchaser Affiliates licensed under
this Agreement (including rights to inventions conceived or first
reduced to practice as of the Closing, whether or not applications
have been filed with respect thereto) which are necessary for any
of the Licensee Parties to reduce to practice, use, modify,
license, make or have made, export, sell, offer for sale, market,
distribute or create derivative works of the Licensed Technology or
products and services that practice, employ or include any of the
Licensed Technology, solely in connection with the Retained
Business and the terms of this Agreement.
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2.3.
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Reservation of Rights . No rights or licenses are
granted or deemed granted hereunder other than those rights or
lic
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