Exhibit 10.1
NON-COMPETITION, NON-DISCLOSURE
AND INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
This Non-competition, Non-disclosure
and Intellectual Property Assignment Agreement (the “
Agreement ”) entered into as of March 24, 2007, is
hereby made by and between BECKMAN COULTER,INC., a Delaware
corporation (the “ Company ”) and, BIOSITE
INCORPORATED, a Delaware corporation (the “Employer”),
on the one hand, and Kim Blickenstaff, an individual, who is a
resident of and employed in the State of California (“
Employee ”), on the other hand.
A.
The Company, Employer, and Louisiana
Acquisition Sub, Inc., a wholly-owned subsidiary of the Company,
are entering into an Agreement and Plan of Merger dated as of March
24, 2007 (the “ Merger Agreement ”), which
provides for the acquisition of Employer by the Company, upon which
Employer would become a wholly owned subsidiary of the
Company;
B.
Employee, Beckman and Employer
desire to enter into this Agreement in connection with the
transactions contemplated by the Merger Agreement, contingent and
effective upon the Effective Time (as defined in the Merger
Agreement);
C.
Employee is the owner of 241,946
shares of Common Stock of Employer and has options to purchase
437,811 shares of Common Stock of Employer, and thereby stands to
benefit by, and receive consideration from, the transactions
contemplated by the Merger Agreement.
D.
Contingent and effective upon the
Effective Time, Employee will become employed by
Employer.
E.
Beckman and Employer desire to
protect their interest in the business acquired, including the
goodwill of that business, from unfair competition or
misappropriation of the intellectual property of the
business.
NOW, THEREFORE, in consideration of
the mutual covenants and agreements hereinafter set forth, the
parties agree as follows:
1.
Assignment of Intellectual
Property Rights .
(a)
Definition of
“Inventions.” As used herein, the term “
Inventions ” shall mean all inventions, discoveries,
improvements, original works of authorship, trade secrets,
formulas, techniques, data, programs, systems, specifications,
documentation, algorithms, flow charts, logic diagrams, source
codes, object codes, processes, and other technical, business,
product, marketing or financial information, plans, or other
subject matter pertaining to the Company, Employer or any of their
respective parents, subsidiaries, affiliates, customers,
consultants or licensees, whether or not patented, tested, reduced
to practice, or subject to patent, trademark, copyright, trade
secret, mask work or other forms of protection
(including
all rights to obtain, register,
perfect, renew, extend, continue, divide and enforce these
proprietary interests), which are made, created, authored,
conceived, modified, enhanced or reduced to practice by Employee,
either alone or jointly with others, during Employee’s
employment with Employer or the Company or any of their respective
parents, subsidiaries or affiliates, and for so long as Employee is
otherwise employed by any of them, whether or not during normal
working hours, which (A) relate to the actual or anticipated
business, activities, research, or investigations of Employer or
the Company or any of their respective subsidiaries or affiliates
or (B) result from or are suggested by work performed by
Employee for Employer or the Company or any of their respective
parents, subsidiaries or affiliates (whether or not made or
conceived during normal working hours or on the premises of
Employer), or (C) which result, to any extent, from use of the
time, material, proprietary information, premises or property of
Employer or the Company or any of their respective parents,
subsidiaries or affiliates.
(b)
Work for Hire
. Subject to Section 1(d),
Employee expressly acknowledges that all copyrightable aspects of
the Inventions are to be considered “works made for
hire” within the meaning of the Copyright Act of 1976, as
amended (the “ Act ”), and that Employer is to
be the “author” within the meaning of such Act for all
purposes. All such copyrightable works, as well as all copies
of such works in whatever medium fixed or embodied, shall be owned
exclusively by Employer as of its creation, and Employee hereby
expressly disclaims any and all interest in any of such
copyrightable works and waives any right of droit morale or
similar rights.
(c)
Assignment
. Subject to Section 1(d),
Employee acknowledges and agrees that all Inventions shall be the
sole property of Employer or any other entity designated by
Employer. Employee hereby conveys and irrevocably assigns to
Employer, without further consideration, all his right, title and
interest in and to, and all claims for past infringement of, all
Inventions, including, with respect to any of the foregoing, all
rights of copyright, patent, trademark, trade secret, mask works,
and any and all other proprietary rights therein, the right to
modify and create derivative works, the right to invoke the benefit
of any priority under any international convention, and all rights
to register and renew same. This assignment is intended to
and does extend to Inventions which have not yet been
created.
(d)
Exceptions
. Notwithstanding the
foregoing, and provided that Employee does not wrongfully
misappropriate any Confidential Information or Trade Secrets,
Employee understands that the provisions of this Agreement
requiring disclosure and assignment of Inventions to Employer do
not apply to any invention which qualifies under the provisions of
California Labor Code Section 2870 set forth in
Schedule A or any similar law
2
applicable to Employer or
Employee. Employee agrees to identify all Inventions made by
Employee that Employee believes meet the criteria of California
Labor Code Section 2870 to Employer in confidence to permit a
determination as to whether or not the Inventions are the property
of Employer, and Employee agrees to disclose all information
Employer reasonably requests about Inventions, including those
Employee contends qualify under this exception to his duty to
assign Inventions. “ Trade Secrets ” shall mean
the whole or any portion or phase of any plan, technique, method,
design, process, procedure, or improvement of Employer, the Company
or any of their respective affiliates or subsidiaries that is
valuable and not generally known to Competitors, whether or not in
written or tangible form. Trade Secrets shall not include any
materials or information that is or becomes publicly known through
no fault of Employee or is disclosed by the Company to third
parties without an obligation of confidentiality.
(e)
Proprietary Notices; No Filings;
Waiver of Moral Rights . Employee acknowledges that subject to
Section 1(d), all Inventions shall, at the sole option of Employer,
bear Employer’s patent, copyright, trademark, trade secret,
and mask work notices. Subject to Section 1(d), Employee
agrees not to file any patent, copyright, or trademark applications
relating to any Invention, except with the prior written consent of
an authorized representative of the Company. Subject to
Section 1(d), Employee hereby expressly disclaims any and all
interest in any Inventions and waives any right of droit morale or
similar rights, such as rights of integrity or the right to be
attributed as the creator of the Invention.
(f)
Further Assurances
. Employee agrees to assist
Employer, or any party designated by Employer, promptly on
Employer’s reasonable request and at Employer’s
expense, whether before or after the termination of employment,
however such termination may occur, in perfecting, registering,
maintaining, and enforcing, in any jurisdiction, Employer’s
rights in the Inventions by performing all acts and executing all
documents and instruments deemed necessary or convenient by
Employer, including, by way of illustration and not
limitation:
(i)
Executing assignments, applications,
and other documents and instruments in connection with
(A) obtaining patents, copyrights, trademarks, mask works, or
other proprietary protections for the Inventions and
(B) confirming the assignment to Employer of all right, title,
and interest in the Inventions or otherwise establishing
Employer’s exclusive ownership rights therein.
(ii)
Cooperating in the prosecution of
patent, copyright, trademark and mask work applications, as well as
in the enforcement of Employer’s rights in the Inventions,
including, but not limited to,
3
testifying in court or before any
patent, copyright, trademark or mask work registry office or any
other administrative body.
Employee shall be reimbursed for all
out-of-pocket costs incurred in connection with the foregoing, if
such assistance is requested by Employer. In addition, to the
extent that, after the termination of employment for whatever
reason, Employee’s technical expertise shall be required in
connection with the fulfillment of the aforementioned obligations,
Employer shall compensate Employee at a reasonable rate for the
time actually spent by Employee at Employer’s request
rendering such assistance.
(g)
Power of Attorney
. Subject to Section 1(d),
Employee hereby irrevocably appoints Employer to be his
attorney-in-fact to execute any document and to take any action in
his name and on his behalf solely for the purpose of giving to
Employer the full benefit of the assignment provisions set forth
above to the extent that after reasonable effort by Employer,
Employee does not comply with his obligations set forth in this
Section 1.
(h)
Disclosure of
Inventions .
Subject to Section 1(d), Employee shall make full and prompt
disclosure to Employer of all Inventions subject to assignment to
Employer and all information relating thereto in Employee’s
possession or under his control as to possible applications and use
thereof.
2.
Non-Disclosure of Confidential
Information, Exclusive Services/Non-Competition and
Non-Solicitation .
(a)
Confidentiality
. Employee acknowledges that
in his employment with Employer or the Company he will occupy a
position of trust and confidence. Employee shall not, except
as may be required in the normal course of business to perform his
duties hereunder or as required by applicable law, without
limitation in time or until such information shall have become
public other than by Employee’s unauthorized disclosure,
disclose to others or use, whether directly or indirectly, any
Confidential Information. “ Confidential
Information ” shall mean confidential or proprietary
information about Employer, or the Company, or their respective
subsidiaries or affiliates, or their respective clients and
customers, that is not disclosed by Employer for financial
reporting purposes and that was learned by Employee in the course
of his employment by Employer or the Company, or their respective
parents, subsidiaries or affiliates (or during any period in which
Employee performed services for or on behalf of Employer),
including (without limitation) any proprietary knowledge, trade
secrets, data, formulae, information and client and customer lists
and all papers, resumes, and records (including computer records)
of the documents containing such Confidential
4
Information. Employee
acknowledges that such Confidential Information is specialized,
unique in nature and of great value to Employer, its subsidiaries
or affiliates, and that such information gives Employer a
competitive advantage. Employee agrees to (i) deliver or
return to Employer, at Employer’s request at any time or upon
termination or expiration of his employment or as soon thereafter
as possible, (A) all documents, computer tapes and disks,
records, lists, data, drawings, prints, notes and written
information (and all copies thereof) furnished by Employer, its
subsidiaries or affiliates, or prepared by Employee for so long as
Employee is employed by Employer, its subsidiaries or affiliates,
and (B) subject to Section 1(d), all notebooks and other data
relating to research or experiments or other work conducted by
Employee in the scope of his employment or any Inventions made,
created, authored, conceived, or reduced to practice by Employee,
either alone or jointly with others, and (ii) subject to Section
1(d), make full disclosure relating to any Inventions. If
Employee would like to keep certain property, such as material
relating to professional societies or other non-confidential
material, upon the termination of employment with Employer, he
agrees to discuss such issues with Employer. Where such a request
does not put Confidential Information at risk, such request shall
not be unreasonably denied.
(b)
Exclusive
Services/Non-Competition . Employee acknowledges that the Employer
and the Company do business throughout the world, that he is
disposing of his entire interest in Employer, and that he will have
access to C
