Exhibit 10.13
SUPERGEN, INC.
EMPLOYMENT, CONFIDENTIAL
INFORMATION,
INVENTION ASSIGNMENT, AND ARBITRATION AGREEMENT
This Employment, Confidential
Information, Invention Assignment, and Arbitration Agreement (the
“ Agreement ”) is entered into as of
December 31, 2003 (the “ Effective Date ”),
by and between SuperGen, Inc., a Delaware corporation (the “
Company ”), and Joseph Rubinfeld (“
Employee ”).
BACKGROUND
A.
The Company and Employee were
parties to (i) that certain Employment, Confidential Information
and Invention Assignment Agreement, dated as of January 1,
1994, as amended by Amendment No. 1 dated January 17,
1996, and as further amended and restated on January 1, 1998,
(the “ First Agreement ”) and (ii) that certain
Executive Employment, Confidential Information, Invention
Assignment and Arbitration Agreement, dated March 1, 2002 (the
“ Second Agreement ”), which superseded in its
entirety the First Agreement (collectively, the “ Prior
Employment Agreements ”).
B.
The Second Agreement will expire by
its terms on December 31, 2003, and the parties desire to enter
into this Agreement, which supersedes in its entirety the Prior
Employment Agreements.
C.
Pursuant to the terms of the Second
Agreement, which expires by its terms on December 31, 2003,
Employee serves as the Company’s President and Chief
Executive Officer.
NOW THEREFORE, in consideration of
the respective covenants and agreements of the parties contained in
this Agreement, the Company and Employee agree as
follows:
AGREEMENT
1.
TERM . The Company hereby
agrees to employ Employee, and Employee hereby accepts employment,
on the terms and conditions set forth herein. The term of
this Agreement shall commence upon the Effective Date and shall
continue until and including December 31, 2004, unless
otherwise terminated sooner by the parties (the “
Term ”). The parties
may agree to enter into another at-will employment agreement, on
terms agreeable to both parties, at the end of the Term; provided,
however, that Employee’s annualized base salary pursuant to
such agreement shall not be less than $595,000, less applicable
withholdings.
2.
AT-WILL
EMPLOYMENT . Notwithstanding the
foregoing in Section 1 above, the parties agree that
Employee’s employment with the Company will be
“at-will” employment and may
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be terminated for any reason
at any time with or without notice. Employee understands and
agrees that neither his job performance, commendations, bonuses or
the like from the Company give rise to or in any way serve as the
basis for modification, amendment or extension, by implication or
otherwise, of his employment with the Company.
3.
POSITION AND
DUTIES . Effective at
midnight, Pacific Standard Time, on December 31, 2003, the Parties
agree to Employee’s reassignment to the position of Chief
Scientist of the Company from that of President and Chief Executive
Officer of the Company (the “ Reassignment ”). As a result
of the Reassignment, Employee shall no longer be employed by the
Company as an officer, and Employee hereby expressly consents to
such Reassignment and resigns as President and Chief Executive
Officer of the Company effective as of midnight, Pacific Standard
Time, on December 31, 2003. Employee will render such
business and professional services in the performance of his duties
as Chief Scientist as the Company will reasonably assign to
him. During the Term, Employee agrees to be available to
perform employment services at Employee’s home office for no
more than twenty (20) hours per week (at the request of the
Company), provided that Employee agrees to be periodically
available at the Company’s Dublin facilities upon the
reasonable request of the Company.
4.
BOARD
MEMBERSHIP . Notwithstanding the
Reassignment, Employee shall continue to serve as a member on the
Company’s board of directors (the “ Board ”) until the next
regularly scheduled meeting of the Company’s
stockholders. The Company will use reasonable efforts to
nominate him to reelection as a member of the Board at that
regularly scheduled meeting of stockholders and will use reasonable
efforts to effect such reelection. Employee shall serve on
the Board as Chair Emeritus, with full membership and under the
same terms and conditions to which all directors are
subject.
5.
CONFIDENTIAL
INFORMATION .
(a)
COMPANY
INFORMATION . Employee agrees at
all times during the Term and thereafter, to hold in strictest
confidence, and not to use, except for the benefit of the Company,
or to disclose to any person, firm or corporation without written
authorization of the Board of Directors of the Company, any
Confidential Information of the Company, except under a
non-disclosure agreement duly authorized and executed by the
Company. Employee understands that “
Confidential Information
” means any
non-public information that relates to the actual or anticipated
business or research and development of the Company, technical
data, trade secrets or know-how, including, but not limited to,
research, product plans or other information regarding
Company’s products or services and markets therefor, customer
lists and customers (including, but not limited to, customers of
the Company on whom Employee called or with whom Employee became
acquainted during his entire term of his employment with the
Company), software, developments, inventions, processes, formulas,
technology, designs, drawings, engineering, hardware configuration
information, marketing, finances or other business
information. Employee further understands that Confidential
Information does not include any of the foregoing items, which have
become publicly known and made generally available through no
wrongful act of Employee’s or of others who were under
confidentiality obligations as to the item or items involved or
improvements or new versions thereof. The parties agree that
disclosures of Confidential Information may be made by Employee,
and that this paragraph shall not apply, (i) to the
extent
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necessary to comply with governmental disclosure
requirements or applicable laws, (ii) pursuant to subpoena or order
of any judicial, legislative, executive, regulatory or
administrative body, or for Employee to lawfully enforce
Employee’s rights under this Agreement and (iii) to
employees, advisors, legal counsel and financial advisors as may be
necessary and appropriate in connection with the proper performance
and enforcement of this Agreement.
(b)
FORMER
EMPLOYER INFORMATION . Employee agrees that
he will not, during his employment with the Company, improperly use
or disclose any proprietary information or trade secrets of any
former employer or other person or entity and that he will not
bring onto the premises of the Company any unpublished document or
proprietary information belonging to any such employer, person or
entity unless consented to in writing by such employer, person or
entity.
(c)
THIRD PARTY
INFORMATION . Employee recognizes
that the Company has received and in the future will receive from
third parties their confidential or proprietary information subject
to a duty on the Company’s part to maintain the
confidentiality of such information and to use it only for certain
limited purposes. Employee agrees to hold all such
confidential or proprietary information in the strictest confidence
and not to disclose it to any person, firm or corporation or to use
it except as necessary in carrying out Employee’s work for
the Company consistent with the Company’s agreement with such
third party.
6.
INVENTIONS
.
(a)
INVENTIONS
RETAINED AND LICENSED . Employee has no
inventions, original works of authorship, developments,
improvements, and trade secrets which were made by him prior to his
employment with the Company (collectively referred to as
“ Prior
Inventions ”), which belong to
him, which relate to the Company’s proposed business,
products or research and development, and which were not previously
assigned to the Company. If in the course of Employee’s
employment with the Company, Employee incorporates into a Company
product, process or service Prior Inventions owned by Employee or
in which Employee has an interest, Employee hereby grants to the
Company a nonexclusive, royalty-free, fully paid-up, irrevocable,
perpetual, worldwide license to make, have made, modify, use and
sell such Prior Inventions as part of or in connection with such
product, process or service, and to practice any methods related
thereto.
(b)
ASSIGNMENT OF
INVENTIONS . Employee agrees that
he will promptly make full written disclosure to the Company, will
hold in trust for the sole right and benefit of the Company, and
hereby assigns to the Company, or its designee, all of
Employee’s right, title, and interest in and to any and all
inventions, original works of authorship, developments, concepts,
improvements, designs, discoveries, ideas, trademarks or trade
secrets, whether or not patentable or registrable under copyright
or similar laws, which Employee may solely or jointly conceive or
develop or reduce to practice, or cause to be conceived or
developed or reduced to practice, as a result of and within the
scope of his duties as an Employee of the Company and during the
period of time Employee is in the employ of the Company
(collectively referred to as “ Company Inventions ”), except as provided
in Section 6(f) below. Employee further acknowledges that all
original works of authorship which are made by him (solely or
jointly with others) within the scope of and during the period of
his employment with the Company, and which are protectable
by
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copyright, are “works
made for hire,” as that term is defined in the United States
Copyright Act. Employee understands and agrees that the
decision whether or not to commercialize or market any Company
Inventions developed by Employee solely or jointly with others is
within the Company’s sole discretion and for the
Company’s sole benefit and that no royalty will be due to
Employee as a result of the Company’s efforts to
commercialize or market any such Inventions. The parties
agree that any and all inventions, original works of authorship,
development, concepts, improvements, designs, discoveries, ideas,
trademarks or trade secrets, whether or not patentable or
registrable under copyright or similar laws which are made by
Employee (solely or jointly with others) that are not within the
scope of his duties for the Company (i.e., not during the time that
he is actually performing duties for the Company) (collectively
referred to as “ non-Company Inventions ”) shall not be subject
to this paragraph and shall be the sole property of Employee and
that he shall have the sole right, title and interest in any such
non-Company Inventions.
(c)
INVENTIONS
ASSIGNED TO THE UNITED STATES . Employee agrees to
assign to the United States government all his right, title, and
interest in and to any and all Company Inventions whenever such
full title is required to be in the United States by a contract
between the Company and the United States or any of its
agencies.
(d)
MAINTENANCE OF
RECORDS . Employee agrees to
keep and maintain adequate and current written records of all
Inventions made by Employee (solely or jointly with others) during
the period of his employment with the Company. The records
will be in the form of dated notes, sketches, drawings, and any
other format that may be specified by the Company. The
records will be available to and remain the sole property of the
Company at all times.
(e)
PATENT AND
COPYRIGHT REGISTRATIONS . Employee agrees to
cooperate and assist the Company, or its designee, agents, and
representatives, at the Company’s expense, in every proper
way to secure and perfect the Company’s rights, title and
interest in the Company Inventions and any copyrights, patents,
mask work rights or other intellectual property rights relating
thereto in any and all countries, including the disclosure to the
Company of all pertinent information and data with respect thereto,
the preparation and execution of all applications, patent
applications, specifications, oaths, assignments, statements,
declarations, petitions, certificates and petitions for correction
and all other instruments which the Company or any government
agency shall deem necessary in order to apply for, prosecute,
correct and obtain such rights and in order to assign and convey to
the Company, its successors, assigns, and nominees the sole and
exclusive rights, title and interest in and to such Company
Inventions, and any copyrights, patents, mask work rights or other
intellectual property rights relating thereto in any and all
countries. Employee further agrees that his obligation to
execute or cause to be executed, when it is in his power to do so,
any such instrument or papers shall continue after the termination
of this Agreement without further consideration. In addition,
Employee covenants and agrees to take no action that would impair
or interfere with the Company’s quiet enjoyment of its sole
and exclusive rights, title and interest in and to such Company
Inventions after termination of this Agreement. If the
Company is unable because of Employee’s mental or physical
incapacity or for any other reason to secure Employee’s
signature to apply for or to pursue, prosecute or correct any
application for any United States or foreign patents or copyright
registrations covering Company Inventions or original works of
authorship assigned to the Company as above, then Employee hereby
irrevocably designates and appoints the Company and its duly
authorized officers and agents as his agent and attorney in fact,
to
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act for and in
Employee’s behalf and stead to execute and file any such
applications and to do all other lawfully permitted acts to further
the prosecution, correction, maintenance and issuance of letters
patent or copyright registrations thereon with the same legal force
and effect as if executed by Employee.
(f)
EXCEPTION TO
ASSIGNMENTS . Employee understands
that the provisions of this Agreement requiring assignment of
Company Inventions to the Company do not apply to any invention
which qualifies fully under the provisions of California Labor Code
Section 2870 (attached hereto as Exhibit A ) or to
any non-Company Inventions. Employee will advise the Company
in writing, within thirty (30) days, of any inventions that
Employee believes meet the criteria in California Labor Code
Section 2870.
7.
COMPENSATION,
BONUS AND FRINGE BENEFITS .
(a)
BASE
SALARY . During the Term, the
Company will pay Employee as compensation for his services a base
salary at the annualized rate of Five Hundred and Ninety Five
Thousand Dollars ($595,000), less applicable withholdings (the
“ Base Salary
”).
The Base Salary shall be paid in periodic installments in
accordance with the Company’s regular payroll
practices.
(b)
DISCRETIONARY
BONUS . Employee shall be
entitled to a discretionary bonus payment for 2003 in the amount of
Two Hundred and Fifty Thousand Dollars ($250,000), less applicable
withholdings (the “ Bonus ”). The Company shall
pay Employee the Bonus within ten (10) business days after Employee
executes (and does not revoke) the Release (as defined below), and
the Release becomes effective (the “ Release Date ”).
(c)
OTHER
BENEFITS . Employee shall be
entitled to participate in such group life, pension, disability,
accident, hospital and medical insurance plans, and such other plan
or plans which may be instituted by the Company for the benefit of
its employees generally, upon such terms as may be therein provided
of general application to all employees of the Company and such
other benefits as are mutually deemed appropriate to the position
held by Employee and to the discharge of Employee’s
duties. Employee shall be entitled to not less than twenty
(20) business days’ vacation per year, with
remuneration.
(d)
LIFE
INSURANCE . During the Term, the
Company, at its expense, will maintain life insurance on behalf of
Employee equal to one hundred and fifty percent (150%) of the Base
Salary. Employee will be entitled to select personal
beneficiaries for 100% of the proceeds of the insurance
policy. The Company will provide Employee with additional
cash compensation at the end of each calendar year to fully offset
taxes attributable to Employee as a result of payment of the life
insurance premiums by the Company.
8.
EXPENSES
. The
Company will reimburse Employee, in accordance with the
Company’s established policies, for reasonable business
related expenses incurred by Employee in furtherance of or in
connection with the performance of Employee’s duties
hereunder, including reasonable expenses incurred in connection
with Employee’s home office (including but not limited to a
computer, telephone, fax and internet charges). Employee
shall furnish the Company with
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evidence of such expenses
within a reasonable period of time from the date such expenses were
incurred.
9.
TERMINATION
BENEFITS .
(a)
INVOLUNTARILY
TERMINATION . If, during the Term,
the Company terminates Employee’s employment with the Company
other than for Cause (as defined herein), death or Disability (as
defined herein), and Employee signs and does not revoke a standard
release of claims with the Company, then Employee will be entitled
to receive continuing payments of severance pay (less applicable
withholding taxes) at a rate equal to his Base Salary rate, as then
in effect, until December 31, 2004 (the “
Payment ”). The Payment
will be paid in accordance with the Company’s normal payroll
practices.
(b)
VOLUNTARY
TERMINATION . In the event the
Employee voluntarily terminates his employment with the Company for
any reason (except as otherwise provided for herein) during the
Term, and Employee signs and does not revoke a standard release of
claims with the Company, then Employee will be entitled to receive
continuing payments (less applicable withholding taxes) at a rate
equal to 50% of his Base Salary rate, as then in effect, until
December 31, 2004 (the “ Continuing Payment ”). The Continuing
Payment will be paid in accordance with the Company’s normal
payroll practices.
(c)
TERMINATION
FOR CAUSE, DEATH OR DISABILITY . In the event
Employee’s employment with the Company is terminated for
Cause, death or Disability, then Employee shall not be entitled to
receive the Payment or the Continuing Payment, but may be eligible
for those benefits (if any) as may then be established under the
Company’s then existing severance policies at the time of
such termination.
(d)
ACCRUED WAGES
AND VACATION; EXPENSES . Without regard to the
reason for, or the timing of, Employee’s termination of
employment: (i) the Company shall pay Employee any unpaid
base salary due for periods prior to his termination of employment;
(ii) the Company shall pay Employee all of Employee’s
accrued and unused vacation through his termination of employment;
and (iii) following submission of proper expense reports by
the Employee, the Company shall reimburse Employee for all expenses
reasonably and necessarily incurred by Employee in connection with
the business of the Company prior to his termination of
employment. These payments shall be made promptly upon
Employee’s termination of employment and within the period of
time mandated by law.
(e)
CAUSE . For the purposes of
this Agreement, “ Cause ” means (i) any
act of personal dishonesty taken by Employee in connection with his
responsibilities which is intended to result in personal enrichment
of Employee, (ii) Employee’s conviction of a felony,
(iii) any act by Employee that constitutes material misconduct
and is injurious to the Company, or (iv) continued violations
by Employee of his obligations to the Company; provided that, in
each case except (ii), Employee has received written notice of the
described activity, has been afforded a reasonable opportunity to
cure or correct the activity (not to exceed 15 days) as described
in the notice, and has failed to cure, correct or cease the
activity, as appropriate.
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(f)
DISABILITY
. For
purposes of this Agreement, “ Disability ” shall mean a
disability, due to illness or injury, which materially limits
Employee from performing each of his material and substantial
duties, even with reasonable accommodation, for a period of six (6)
consecutive months. The Company shall provide Employee
fourteen (14) days’ written notice of termination for
Disability.
10.
STOCK
OPTIONS .
(a)
MILESTONE
STOCK OPTIONS . Employee has
heretofore been granted by the Company options to purchase the
Company’s common stock, which vest upon the attainment of
certain milestones and triggers (the “ Milestone Option ”). As of the
date hereof, approximately 300,000 shares subject to the Milestone
Option are unvested. The Company shall accelerate, on or
about the Release Date, the vesting of 170,000 shares subject to
the Milestone Option, in tranches of 100,000 shares and 70,000
shares respectively, as identified by Employee. The remaining
130,000 shares subject to the Milestone Option shall continue to
vest in accordance with the terms of the stock option plan under
which they were issued and the stock option agreement between the
Company and Employee
(b)
OPTION
ACCELERATION IN THE EVENT OF INVOLUNTARY TERMINATION FOLLOWING A
CHANGE OF CONTROL . If, during the Term,
Employee’s employment with the Company or a successor
corporation is terminated by the Company or successor corporation
as a result of an Involuntary Termination (as defined below)
following a Change of Control (as defined below), Employee shall be
entitled to full acceleration of the vesting of any then unvested
stock options (including all unvested Milestone Options) then held
by Employee, and such accelerated options shall remain subject to
and be exercisable in accordance with the terms of the stock option
plan under which they were issued and the stock option agreement
between the Company and Employee.
(c)
CHANGE OF
CONTROL . For purposes of this
Agreement, “ Change of
Control ” means the occurrence
of any of the following events: (i) any “person”
(as such term is used in Sections 13(d) and 14(d) of the Exchange
Act) becomes the “beneficial owner” (as defined in Rule
13d-3 of the Exchange Act), directly or indirectly, of securities
of the Company representing fifty percent (50%) or more of the
total voting power represented by the Company’s then
outstanding voting securities; (ii) the consummation of the sale or
disposition by the Company of all or substantially all of the
Company’s assets; or (iii) the consummation of a merger or
consolidation of the Company with any other corporation, other than
a merger or consolidation which would result in the voting
securities of the Company outstanding immediately prior thereto
continuing to represent (either by remaining outstanding or by
being converted into voting securities of the surviving entity or
its parent) at least fifty percent (50%) of the total voting power
represented by the voting securities of the Company or such
surviving entity or its parent outstanding immediately after such
merger or consolidation.
(d)
INVOLUNTARY
TERMINATION . For purposes of this
Agreement, “ Involuntary Termination ” means
(i) without Employee’s express written consent, a
significant reduction of Employee’s duties, position or
responsibilities relative to Employee’s duties, position or
responsibilities in effect immediately prior to such reduction;
(ii) without Employee’s express
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written consent, a
substantial reduction, without good business reasons, of the
facilities and perquisites (including office space and location)
available to Employee immediately prior to such reduction;
(iii) without Employee’s express written consent, a
material reduction by the Company of Employee’s Base Salary
as in effect immediately prior to such reduction; (iv) without
Employee’s express written consent, a material reduction by
the Company in the kind or level of employee benefits to which
Employee is entitled immediately prior to such reduction with the
result that Employee’s overall benefits package is
significantly reduced; (v) without Employee’s express
written consent, the relocation of Employee to a facility or a
location more than fifty (50) miles from his current location, or
(vi) any purported termination of Employee other than for
Cause (as defined in this Agreement).
11.
RELEASE OF
CLAIMS . In consideration for
the receipt of the Bonus provided for in Section 7(b) hereof,
Employee agrees to execute and not revoke, in the form
substantially attached hereto as Exhibit B , a mutual
release of claims covering potential claims by both parties against
the other up to and including the Effective Date (the
“ Release
”).
In no event shall the Company be obligated to provide, and Employee
shall have no right to receive, the Bonus in the event (i) Employee
fails to execute the Release or (ii) Employee revokes the
Release. Furthermore, in consideration of the Termination
Benefits provided for in Sections 9(a) and/or 9(b), Employee agrees
to execute and not revoke, in a form substantially similar to
Exhibit C , a mutual release of claims for the time period
covering the Term (the “ Second Release ”). The Company
will also execute the Release and the Second Release once, and if,
Employee executes each document.
12.
LIMITATION ON
PAYMENTS . In the event that the
severance and other benefits provided for in this Agreement or
otherwise payable to Employee, including but not limited to, the
accelerated vesting of any stock options previously or hereafter
granted to Employee, (i) constitute “parachute
payments”
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