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Exhibit 10.37 Execution Copy: August 21,
2003 SETTLEMENT AGREEMENT AND RELEASE
This Settlement Agreement and
Release (the " Agreement ") is made and entered into as
of the date of the last signature below (the " Effective
Date "), by and among Gilead Sciences, Inc. (in its own
capacity and as successor in interest to NeXstar Pharmaceuticals,
Inc., successor in interest to NeXagen, Inc.), a Delaware
corporation, with its principal place of business at 333 Lakeside
Drive, Foster City, CA, 94404 (" Gilead "), Archemix
Corp. , a Delaware corporation, with its principal place of
business at 1 Hampshire Street, 5th Floor, Cambridge, MA 02139 ("
Archemix "), and University License Equity Holdings,
Inc. (formerly known as University Technology Corporation,
successor in interest to University Research Corporation), a
Colorado corporation, having a mailing address at 4001 Discovery
Drive, Suite 390C, Boulder, CO 80309 (" ULEHI ").
Gilead, Archemix and ULEHI are referred to herein individually as a
" Party " and collectively as the " Parties ".
RECITALS A.
Whereas, University Research Corporation and NeXagen, Inc.,
entered into that certain License Agreement dated as of
July 17, 1991, pursuant to which NeXagen, Inc. obtained rights
to certain patents and technology relating to the SELEX Process;
B. Whereas, the
July 17, 1991 agreement was subsequently amended on October
26, 1992, April 5, 1994, and September 5, 1996 and
ultimately restated on June 25, 1998 as the Restated
Assignment and License Agreement (the "URC License
Agreement" ); C.
Whereas, pursuant to the merger of Gilead with NeXstar on
July 29, 1999, Gilead assumed all rights, claims, obligations
and liabilities of NeXstar under the URC License Agreement by
virtue of such merger; D.
Whereas , Archemix and Gilead have entered into that certain
License Agreement dated October 23, 2001, pursuant to which
Gilead granted to Archemix rights under the URC License Agreement
(the " Archemix Agreement "); and
E. Whereas, ULEHI delivered a
Termination Notice to Gilead dated November 21, 2002, (the "
Termination Notice "), which alleged certain breaches of the
URC License Agreement by Gilead; and
F. Whereas , the Parties desire to amicably settle
and resolve, and release Gilead and Archemix from, any and all
claims relating to or arising in connection with those matters
alleged in the Termination Notice and/or in connection with the URC
License Agreement solely as it relates to the Archemix Agreement.
AGREEMENT Now,
Therefore , in consideration of the foregoing, of the mutual
covenants and undertakings contained herein and of other good and
valuable consideration, the receipt and and sufficiency of which
are hereby acknowledged, the Parties, intending to be legally
bound, hereby agree as follows: Portions of this Exhibit were
omitted and have been filed separately with the Secretary of the
Commission pursuant to the Company’s application requesting
confidential treatment under Rule 406 of the Securities
Act.
1. Definitions.
Capitalized terms used in this Agreement, unless otherwise
indicated, shall have the meanings set forth in the URC License
Agreement; provided, however , that, with respect to
Section 2(b) below, "Archemix" shall be substituted for
"NeXstar" in the meanings of capitalized terms set forth in the URC
License Agreement. 2.
Payments.
(a) By Gilead.
(i) Gilead will pay to ULEHI an amount equal to [***]
dollars ($[***]), payable in [***] equal installments of [***]
dollars ($[***]). The first such installment shall be paid by
Gilead within [***] business days of the Effective Date. Each of
the remaining three installments shall be paid, respectively, on
the first, second and third [***] of the Effective Date.
(ii) Gilead will transfer to ULEHI a warrant to
purchase [***] ([***]) shares of Archemix Common Stock, pursuant to
the Warrant Transfer Agreement executed by the Parties of even date
herewith.
(iii) The first sentence of Section 5.2(a) of the
URC License Agreement is hereby amended to provide that Gilead will
pay to ULEHI earned royalties on Net Sales of Licensed Products by
non-Affiliate sublicensees equal to [***] percent ([***]%) of any
earned royalties received by Gilead from its sublicensees with
respect to such Net Sales of Licensed Products. Gilead further
agrees that, notwithstanding any modifications to the existing
terms of such sublicenses after the Effective Date (including but
not limited to any modifications that result in advances credited
against royalties owed to Gilead under such sublicenses on future
Net Sales or any conversion of ongoing royalties owed to Gilead
under such sublicenses on future Net Sales into a fixed amount of
License Fees), or any modifications to the existing corporate
relationships between Gilead and such sublicensees (including but
not limited to Gilead acquiring or being acquired by [***] or any
of their affiliates), the royalty payable to ULEHI in connection
with Net Sales of Licensed Products by such sublicensee will not be
less than [***] percent ([***]%) of any earned royalties that
Gilead would be entitled to receive from such sublicensee on such
Net Sales under the terms of such sublicenses as of the Effective
Date (including but not limited to any terms that provide for a
reduction in royalty rates for royalties paid to third parties).
Gilead agrees to make the payments to ULEHI under this paragraph
2(a)(iii) and to provide ULEHI with reports relating to such
payments in accordance with Section 6 of the URC License
Agreement. In connection with any modifications to such
sublicenses, Gilead agrees to require the sublicensees to continue
to provide Gilead with ongoing reports sufficient for Gilead to
satisfy such Gilead reporting obligations.
(b) By Archemix.
(i) Archemix will pay to ULEHI earned royalties equal
to [***] percent ([***]%) on Net Sales by Archemix and Archemix
Affiliates of Licensed Products.
(ii) Archemix will pay to ULEHI earned royalties equal
to [***] percent ([***]%) on License Fees, Milestone Payments and
royalty payments on Net Sales Portions of this Exhibit were omitted
and have been filed separately with the Secretary of the Commission
pursuant to the Company’s application requesting confidential
treatment under Rule 406 of the Securities Act.
received by Archemix and Archemix Affiliates from sublicensees
as consideration for a sublicense granted under the Archemix
Agreement; provided, however , that the foregoing shall not
apply to any consideration received by Archemix pursuant to its
[***] with [***]. Archemix shall provide reports to and make
payments to ULEHI in accordance with Section 6 of the URC
License Agreement. Gilead hereby [***] guarantees the payment of
all such royalties by Archemix.
3. Release of Claims. ULEHI, on its own behalf, on
behalf of its affiliates and on behalf of its assigns, attorneys,
agents, accountants, legal representatives, officers, directors,
shareholders, partners, employees, contractors, predecessors,
successors, subsidiaries, members and parents (collectively, the "
ULEHI Releasing Parties "), hereby absolutely and
unconditionally releases, waives, forever discharges and agrees not
to sue or otherwise commence any action against Gilead, Archemix,
each of Gilead’s and Archemix’s affiliates and their
respective assigns, attorneys, agents, accountants, legal
representatives, officers, directors, shareholders, partners,
employees, contractors, predecessors, successors, subsidiaries,
members and parents from any and all claims, counterclaims, rights,
demands, obligations, debts, liabilities, judgments, suits, causes
of action and actions of any kind, nature or description
whatsoever, in law or in equity, judicial or administrative, civil
or criminal, whether or not now known, claimed, asserted,
suspected, or discoverable, arising or accruing at any time prior
to and including the Effective Date, that any of them may ever have
had or claimed to have had, from the beginning of time to the date
hereof, or which may hereafter accrue against any one of the above
listed entities based upon any acts or omissions occurring prior to
the date of this Agreement that relate to any of the matters
alleged
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