Exhibit 10.3
LICENSE AGREEMENT
This License Agreement (this
“Agreement”) is effective as of the Effective Date, as
defined below, and is between Agilent Technologies, Inc.
(“Agilent”) incorporated under the laws of the State of
Delaware, with a place of business at 5301 Stevens Creek Blvd,
Santa Clara, California, and Catalyst Assets LLC
(“Catalyst”), a limited liability company under the
laws of Delaware, with a place of business at 3545 South
Park Drive, Jackson, Wyoming 83001 (the “ Agreemen
t” ). Each of Agilent and Catalyst is a “
Party ” and together they are the “
Parties ” to this Agreement. Any other Entity is a
“ Third Party.”
RECITALS
Agilent owns or controls and has the
right to license certain patents and patent rights and desires to
grant and Catalyst desires to obtain a license under such
rights.
In consideration of the mutual
promises and covenants contained herein, and those provided in a
certain Asset Purchase Agreement between the parties dated as of
the Effective Date, the parties agree as follows:
1.
Definitions .
a. “ Affiliate ”
means for a company, any corporation or other business Entity in
which such company owns or controls, directly or indirectly, at
least fifty percent (50%) of the outstanding stock or other voting
rights entitled to elect directors; provided, however, that in any
country where the local law does not permit foreign equity
participation of at least 50%, then an “Affiliate”
shall include any corporation or other business Entity in which the
company owns or controls, directly or indirectly, the maximum
percentage of such outstanding stock or voting rights permitted by
local law.
b. “ Assigned Patent
Rights ” means those patent and other intellectual
property rights, including licensed intellectual property rights,
which were assigned to Catalyst by Agilent under the Asset Purchase
Agreement and/or the Assignment Agreement between Agilent and
Catalyst both entered as of the Effective Date.
c. “
Control ” means (a) in the case of corporate Entities,
direct or indirect ownership or control (such as through voting
trusts) of at least fifty percent (50%) of the stock or shares
having the right to vote for the election of directors, and (b) in
the case of non-corporate entities, the direct or indirect power to
manage, direct or cause the direction of the management and
policies of the non-corporate Entity or the power to elect at least
fifty percent (50%) of the members of the governing body of such
non-corporate Entity.
d. “ Clinical Services
Field ” means the development and use of clinical assays
only for internal use and consumption including provision of
contract clinical service(s) resulting in the delivery of
clinically or medically relevant results to patients or their
caregivers, in all cases expressly excluding forensic applications
and Research Services.
e. “ Collaboration
” means any cooperative scientific engagement by
written formal agreement executed between Catalyst and a Third
Party, under which: (a) there is an exchange or transfer of
proprietary information and/or biological materials; (b) each party
contributes in a material manner to
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design, execution and/or data
analysis of the scientific premise; (c) each provides the other
substantial scientific input, sharing data and results; (d) the
data are used to facilitate Catalyst’s research and
development and (e) Catalyst has been granted or retains
significant proprietary rights for significant intellectual
property generated.
f. “ Diagnostics
Field ” means in-vitro products, devices, reagents,
components, systems, applications, software and/or assays for
clinical use, including without limitation diagnostic and
prognostic tests, in each case that may require a premarket
clearance or approval, including a 510k, ASR (provided that
Catalyst may not sell an ASR product that is identical in
formulation to one of Agilent’s cataolog products), or PMA,
from the Federal Food and Drug Administration or a foreign
equivalent governing body, or that is manufactured under and in
compliance with Quality Systems Regulations governing the
manufacture of in-vitro diagnostics and/or devices, before the same
may enter the stream of commerce, but excluding the fields of
urinalysis, autoimmune and allergy testing.
g. “ Effective
Date ” means 12:01 a.m., Pacific Standard Time, on the
first Business Day following the Effective Time as defined in the
Agreement and Plan of Merger among Agilent Technologies, Inc.,
Jackson Acquisition Corp., and Stratagene Corporation dated as of
the 5 th day of April, 2007 (the “Merger
Agreement”).
h. “Entity” means
any natural or legal person, partnership, association or
governmental authority.
i. “ Licensed
Product ” means (i) any product, the making, use, sale,
offering for sale or importation or exportation of which infringes
one or more Valid Claims of the Patents or the patents sublicensed
to Catalyst pursuant to Section 2(a)(7) hereof, (ii) any product
which is manufactured by using a Licensed Process, or (iii) any
product that, when used, practices a Licensed Process.
j. “ Licensed
Process ” means any process, the practice of which
infringes one or more Valid Claims of the Patents or which
infringes one or more Valid Claims of patents sublicensed to
Catalyst pursuant to Section 2(a)(7) hereof.
k. “ Licensed
Technology and Know-How ” shall mean any technology,
materials, clones, chemicals, biologicals, data, information,
know-how, documents, and software that is owned by Stratagene
immediately before its merger with Agilent, including business
reasonable access to Agilent employees working in the business
which was operated by Stratagene immediately before the merger, for
consultation for purposes of Catalyst developing Licensed
Products.
l. “ Net Sales
” means the gross amount received by Catalyst for the sale of
Licensed Products, less the following:
(i)
trade, quantity, or cash discounts
to the extent actually allowed and taken;
(ii)
amounts repaid or credited by reason
of rejection or return;
(iii)
to the extent separately stated on
purchase orders, invoices, or other documents of sale, any duties,
taxes or other governmental charges levied on the production, sale,
transportation, delivery, or use of a Licensed Product which is
paid by or on behalf of Catalyst; and
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(iv)
transportation (including insurance)
costs.
No deductions shall be made for
commissions paid to individuals whether they are with independent
sales agencies or regularly employed by Catalyst and on its
payroll, or for cost of collections. Net Sales shall occur on
the date amounts are received by Catalyst. If a Licensed
Product is distributed for non-monetary consideration (whether or
not at a discount) in other than a bona fide Collaboration, Net
Sales shall be calculated based on the average amount received for
Licensed Product sold to independent Third Parties during the same
Reporting Period or, in the absence of such sales, on the fair
market value of the Licensed Product. Net Sales shall not
include amounts received from Affiliates of Catalyst unless such
Affiliate is an end-user of any Licensed Product, in which case
such consideration shall be included in Net Sales and shall be
calculated in accordance with the preceding sentence.
m. “ Patent
Rights ” means any rights granted to the owner of the
Patents under any applicable laws, rules, regulations or other
legal requirements of any applicable governmental entity, foreign
or domestic.
n. “ Patents
” means all patents, patent applications, and inventions
which were owned by Stratagene immediately before the closing of
its merger with Agilent and are owned by Agilent after the closing
of the Asset Purchase Agreement between Agilent and Catalyst (the
“Acquired Patents”), together with any provisionals,
divisions, reissues, reexaminations, term extensions, continuations
and continuations-in-part, and applications for any of the
foregoing, plus any patent applications filed after the Effective
Date that claim priority to any patent or patent application which
are part of the Acquired Patents, or any invention included in any
Acquired Patent, or any invention that was made by Stratagene, Inc.
prior to its merger with Agilent.
o. “ Reporting
Period ” begins on the first day of each calendar
quarter and end on the last day of such calendar
quarter.
p. “ Research
Field ” means all fields excluding the Diagnostics
Field, Therapeutics Field and/or Clinical Services.
q. “ Research
Services ” means commercial or contract service(s)
resulting in the delivery of Research data and/or analyses to Third
Parties for payment in cash or in kind, but excluding bona fide
Collaborations.
r. “ Standard
Manufacturing Costs ” means the fully burdened cost to
manufacture or procure a product as calculated by Agilent in
compliance with generally accepted accounting principals and in
accordance with Agilent’s then current Accounting and Finance
Manual, relevant portions of which will be provided in confidence
upon request.
s. “ Stratagene
” means Stratagene, Inc. as it existed immediately
prior to its merger with Agilent.
t. “ Term ”
means the period of time commencing on the Effective Date and to
the expiration or abandonment of the last patent in force of all
issued patents and filed patent applications within either the
Patent Rights or the rights sublicensed to Catalyst pursuant to
Section 2(a)(7).
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u. “ Therapeutics Field
” means development, manufacture, and sale of pharmaceuticals
and active pharmaceutical ingredients, including, without
limitation, nucleic acid-based therapies in all cases for in-vivo
therapeutic consumption and metabolism.
v. “ Valid Claim
” shall mean a claim of any issued, unexpired United States
or foreign patent that shall not have been donated to the public,
disclaimed, nor held invalid or unenforceable by a court of
competent jurisdiction in an unappealed or unappealable
decision.
2.
Grant of Rights.
a. License to Patent
Rights. Subject to the terms and restrictions of Catalyst
rights and activities found in this Agreement, Agilent hereby
grants Catalyst the following rights under the Patent
Rights:
(1) Internal Use. A
non-exclusive, non-transferable, world-wide, fully-paid,
royalty-free license, without the right to sublicense, to use
internally and in bona fide Collaborations, as well as to make,
have made, import and export for internal use, Licensed Products,
Licensed Processes, and Licensed Technology and Know-How in all
fields.
(2) Clinical Services
Field. A non-exclusive, non-transferable, world-wide,
fully-paid, royalty-free license, without the right to sublicense,
to make, have made, use, import, and export Licensed Products,
Licensed Processes, and Licensed Technology and Know-How in the
Clinical Services Field.
(3) Diagnostics Field.
A non-exclusive, non-transferable, world-wide, fully-paid,
royalty-free license, without the right to sublicense, to make,
have made, use, import, export, lease, sell, offer to sell or
otherwise transfer Licensed Products, Licensed Processes, and
Licensed Technology and Know-How in the Diagnostics Field, subject
to the rights of Agilent set forth in Sections 2(a)(5) and
3.
(4) Therapeutics Field
. A non-exclusive, world-wide, non-transferable, fully paid,
royalty free license, without the right to sublicense, to make,
have made, use, import, export, lease, sell, offer to sell or
otherwise transfer Licensed Products, Licensed Processes, and
Licensed Technology and Know-How in the Therapeutics Field, subject
to the rights of Agilent set forth in Sections 2(a)(5) and
3.
(5) License Rights upon Change of
Control. Upon the occurrence of a change of Control of
Catalyst, Catalyst’s rights to lease, sell or otherwise
transfer Licensed Products under Section 2(a)(3) and 2(a)(4) in the
Diagnostics Field and the Therapeutics Field rights are limited to
the continued selling of existing Licensed Products, namely,
Licensed Products which were actually being sold commercially at
the time that the change of Control occurred, or which began any
level of the regulatory approval process of any jurisdiction at the
time that the change in Control occurred. For purposes of
this section, one dollar ($1) in revenue from the sale of Licensed
Products shall be deemed to satisfy the “commercial”
requirement. In addition, upon the occurrence of a change of
Control of Catalyst, Catalyst’s rights under Section 2(a)(2)
shall remain unchanged.
(6) No Additional Rights.
Nothing in this Agreement shall be construed to confer any
rights upon Catalyst by implication, estoppel, or otherwise to any
technology or patent rights of Agilent other than the rights
expressly provided for in this Agreement. Except as provided
in Section 2(a)(7), no
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license is granted by Catalyst under
this Agreement, either directly or by implication, under any patent
other than the Patent Rights.
(7) Right to Sublicense
Agilent In-Licensed Patent Rights .
(A)
In consideration of rights conferred to Agilent under Art. 3 below,
Agilent agrees, upon license-specific request, to provide Catalyst
a sublicense to patent rights licensed to Agilent in any license
agreement existing between Stratagene and a Third Party as of the
Effective Date (including the MiRNA license) or under any license
agreement in negotiation between Stratagene and a Third Party as of
the Effective Date, provided the license was successfully assumed
by Agilent after the merger and the Third Party permits Agilent, as
successor in interest to Stratagene, to grant such a
sublicense. Any such sublicense shall be subject to Catalyst
paying Agilent any out of pocket costs Agilent must pay the
applicable licensor for granting of the sublicense to Catalyst and
otherwise for Catalyst’s use of the applicable licensed
patents, without markup (meaning neither markups to the upfront
amounts nor to running royalties) plus a reasonable administration
fee. In addition to the restrictions and limitations provided
in this Agreement, rights conferred by Agilent to Catalyst through
such sublicenses are also subject to the terms and limitations of
the specific sublicenses granting the rights. Notwithstanding
the foregoing, if Agilent has granted a sublicense to a Third Party
and provided that Third Party withAgilent’s most favored
customer terms in the sublicense, and Catalyst has requested a
sublicense to the patents licensed that Third Party, Agilent will
notify Catalyst of the applicable most favored customer terms, and
upon Catalyst’s request, grant a sublicense to Catalyst under
the same terms, conditions, and fee structure.
(B)
In connection with Stratagene’s current negotiations with
Bio-Rad regarding Stratagene’s desire to use Bio-Rad’s
DNA binding domain and 3’ exonuclease patents, including
Bio-Rad’s SSO7and 3’ exonuclease patents and patent
applications (the “SS07 Patent Rights”) and
Bio-Rad’s existing use of Stratagene’s gradient
thermocycler intellectual property which Agilent will acquire in
connection with the merger with Stratagene, Agilent agrees to use
reasonable commercial efforts to obtain sufficient rights from
Bio-Rad to sublicense the SS07 Patent Rights to Catalyst for use in
the Diagnostics Field, Therapeutics Field and Clinical Services
Field (the “Catalyst Fields”) (or fields as close to
such fields as Agilent is able to negotiate). Should these
negotiations be successful, Agilent shall provide a sublicense to
Catalyst for use of the SSO7 Patent Rights in the Catalyst
Fields. Agilent agrees not to settle with, license to, grant
a covenant not to sue, or otherwise provide Bio-Rad freedom to
operate (either through action or inaction) under Agilent’s
Patent Rights before exhausting its reasonable commercial efforts
to obtain the sublicensable rights to the SS07 Patent Rights in the
Catalyst Fields at a royalty expense to Catalyst of not to exceed
1% of Catalyst’s net sales in cash plus 1.5% of
Catalyst’s net sales in credits issuing from Catalyst to
BioRad for Bio-Rad’s use of the above referenced Agilent
intellectual property.
b. Right of Supply .
Agilent will supply Catalyst with catalog products from
Agilent’s pre-merger Catalog, as well as any future products
added to Agilent’s Catalog that practice any Valid Claim of
any of the Patents, in all cases for a sales price equal to
Agilent’s Standard Manufacturing Costs plus ten percent
(10%), or the price in Section 2(c), if lower. Such right of
supply is not assignable, is void upon change of Control of
Catalyst, and the products purchased at this price are subject to
any license rights set forth in this Agreement. Catalog
products purchased under this right of supply cannot be
resold,
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except as ingredients in products
sold under the Diagnostics Field or Therapeutics Field license
rights granted above.
c. Right of Supply Upon Change of
Control. Upon change of Control of Catalyst,
Agilent hereby agrees to supply Catalyst with catalog products on
its most favorable end-user commercial terms.
d. Licensed Technology and
Know-How . Catalyst shall have a non-exclusive,
non-transferable, world-wide, fully paid, royalty free license,
without the right to sublicense, to obtain, acquire, make, have
made, and use the Licensed Technology and Know-How for purposes of
developing and manufacturing Licensed Products and otherwise
exercising its rights under this Agreement. Upon
Catalyst’s requests, Agilent will provide Catalyst with the
tangible embodiments of any of the foregoing to the extent they
existed as of the Effective Date, at Agilent’s cost plus a
reasonable administrative fee. These rights are subject to
Agilent’s rights to manufacture and distribute as provided in
Section 3.
3. Agilent’s Right
to Manufacture and Distribute.
The rights to manufacture and sell
Licensed Products granted Catalyst in Section 2 of this Agreement
are subject t
