Exhibit
10.31
LICENSE, PRODUCT PRODUCTION,
AND DISTRIBUTION AGREEMENT
This Agreement is made and entered into
this 19th day of June 2008 (the "EFFECTIVE DATE"), by and among LifeLine Cell
Technology, LLC, a California limited liability company with offices located at
2595 Jason Court, Oceanside, CA 92056 (“Lifeline”), BioTime, Inc., a California
corporation with offices located at 1301 Harbor Bay Parkway, Suite 100 Alameda,
California 94502 (“BioTime”), and Embryome Sciences, Inc., a California
corporation and subsidiary of BioTime with offices located at 1301 Harbor Bay
Parkway, Suite 100, Alameda, California 94502 (“ES”) Lifeline, BioTime, and ES
are sometimes hereinafter referred to as the “Parties.”
RECITALS
A. Lifeline
has rights to use certain cell technology licensed from Advanced Cell
Technology, Inc. (“ACT”), and the expertise and facilities to produce in
commercial quality and quantity cells and media optimized for cells derived from
or based on that technology.
B. BioTime
and ES have rights to embryonic stem technology, and cells produced from that
technology, under a license from WARF.
C. Lifeline
also has marketing and distribution capability and a pre-existing relationship
with certain major distributors of cells and media, which have been disclosed to
BioTime and ES.
D. ES
has both marketing and distributing capability for cell-based products for the
research-only market, particularly through its proprietary “Embryome.com” data
base technology, its proprietary “Embryomics” cell isolation and propagation
technology, and has access to embryonic stem technology under a license from
WARF.
NOW, THEREFORE, in consideration of the
premises and the mutual covenants contained herein, the parties hereto agree as
follows:
ARTICLE 1 -
DEFINITIONS
1.1
Definitions.
For
the purposes of this Agreement, the following words and phrases shall have the
following meanings:
(a) “Cell
Technology” means technology under patents and know-how licensed or sublicensed
by Lifeline from Advanced Cell Technology, Inc. under the license agreements
listed on Schedule 1.
(b) “ES
Products” means cells and cell lines developed by ES without the use of Cell
Technology.
(c) “ES
Technology” means cell isolation and propagation technology that is proprietary
to ES or BioTime, and may include patents, patent applications, and
trade-secrets.
(d) “Lifeline
Products” means cells and cell lines developed using Lifeline Technology, but
not ES Technology, WARF Technology, and/or WARF Materials.
(e) “Lifeline
Technology” means technology other than Cell Technology that is proprietary to
Lifeline, and may include patents, patent applications, and
trade-secrets.
(f) “Joint
Products” means (i) clonally or oligoclonally derived embryonic progenitor cells
or progenitor cell lines produced using Cell Technology and WARF Technology,
WARF Materials, or ES Technology, and (ii) products derived from the progenitor
cells described in clause (i).
(g)
“Marketing
Cost” means, the reasonable costs associated with promoting, selling, packaging,
transferring title and moving Joint Products to the customer and include direct
costs and overhead costs. Direct costs of marketing include but are
not limited to: market research; advertising; development, printing and
distribution of collateral materials; selling expenses including salaries,
benefits, commissions and sales-related expenses, and reimbursements paid to
sales employees, customer service employees, and accounting employees involved
with invoicing and accounts receivables, and an overhead burden of 15% of the
employee component of direct cost. The initial percentage of overhead
costs allocated to marketing will be revised and agreed upon between the Parties
on a periodic basis according to Section 5.11.
(h) “Production
Cost” means the reasonable costs associated with (i) the initial production and
testing of a new Joint Product in the laboratory, (ii) the preparation of
equipment and procedures for the production of a new Joint Product on a
commercial scale, and (iii) producing, testing and packaging of Joint Products
for distribution and sale. Production Costs include direct costs and
overhead costs. Direct costs of production include but are not
limited to: laboratory supplies and materials, WARF Materials, commercial
production and quality control supplies and materials; salaries and benefits
paid to production and quality control employees; and payments to independent
contractors, and an overhead burden of 30% of the employee component of direct
cost.
The
initial estimate of overhead costs allocated to production will be revised and
agreed upon between the parties on a periodic basis according to Section
5.11.
(i) Net
Revenues means the gross revenues from the sale of Joint Products, less all (i)
shipping costs (including packaging, freight, and insurance costs invoiced to
purchasers), (ii) discounts, (iii) sales, VAT and similar taxes, (iv) returns
and other credits actually allowed to purchasers, and (v) uncollected
accounts.
(j) “WARF”
means Wisconsin Alumni Research Foundation.
(k) “WARF
Technology” means technology under patents licensed by BioTime from
WARF.
(l) “WARF
Materials” means cells or cell lines obtained by BioTime or ES under a license
from WARF.
ARTICLE 2 – PRODUCTION OF
JOINT PRODUCTS
2.1
Production of Joint Products
By ES
. ES shall produce the Joint Products subject to the
rights of Lifeline in Section 2.2:
2.2.
Production of Joint
Products
.
(a) Lifeline
may also produce Joint Products if (a) ES fails to offer for sale a minimum of
12 new Joint Products per year beginning in 2009, or (b) ES consents to Lifeline
producing a Joint Product.
(b) Lifeline
may produce any new Joint Product that Lifeline conceives of and offers to ES to
produce but which ES declines to produce, or any other Joint Product the
production of which ES has determined to discontinue. In this regard,
if Lifeline desires ES to produce a new Joint Product, Lifeline shall provide ES
with written information describing the new Joint Product, including the method
of production, use, and proposed price of the new Joint Product. The
information from Lifeline shall be in sufficient detail to permit ES to make an
informed decision to produce or not produce the new Joint
Product. Within thirty (30) days after receipt of such information
from Lifeline, ES shall notify Lifeline of ES’s election to produce the new
Joint Product. If ES fails to so notify Lifeline, ES shall be deemed
to have elected not to produce the new Joint Product.
(c) If
Lifeline uses any WARF Technology or WARF Materials to produce any Joint Product
under paragraph (a) or (b) of this Section, ES shall collaborate with Lifeline
by providing technical advice through the review and comment on development
plans and methods, but ES shall not be required to (i) utilize its laboratory or
production facilities, materials, or equipment for the production of the Joint
Product; and (ii) provide personnel to staff laboratory or production
functions. ES’s cost of providing the services described in this
paragraph shall be deemed Production Costs.
(d) Lifeline
shall not be deemed to have jointly produced stem cells from the H9 stem cell
line previously cultured by BioTime or ES with assistance from
Lifeline.
2.3
Use of Cell
Technology
. Lifeline hereby grants ES an exclusive sublicense
to use of Cell Technology to the extent required for the purpose of producing,
making, and distributing Joint Products, but, except as required for such
purpose, no other license or sublicense of Cell Technology is granted or shall
be implied by this Agreement. Lifeline will provide ES with a license
to use Lifeline Technology to permit ES to practice the Cell Technology for the
purpose of producing Joint Products.
2.4
Facilities and
Personnel
. Lifeline will provide laboratory and production
facilities and personnel, as reasonably requested by ES to produce, make, or
distribute Joint Products.
Lifeline
shall use its own laboratory and production facilities and personnel for the
production of any Joint Products that Lifeline produces. ES will make
available at the Lifeline facilities the services of Dr. Michael West and other
ES personnel as needed to assist Lifeline personnel in developing the techniques
needed to produce a Joint Product. Lifeline will make available at
the ES facilities the services of Lifeline personnel as needed to assist ES in
developing and implementing standard operating procedures for production Joint
Products, procedures for distribution of Joint Products, and procedures for
Production Cost tracking, accounting and controls. The Parties
acknowledge and agree that their personnel will not be providing assistance to
each other on a full-time basis, but only to the extent necessary (and subject
to their availability taking into account scheduling issues and their other time
commitments) to permit each Party to commence production of a Joint Product and
to develop and implement operating procedures for commercial production and
distribution of a Joint Product, and to track and account for related Production
Costs, using their own personnel. Moreover, the assistance of ES
personnel may be limited to the matters described in Section 2.2(c) in cases in
which that paragraph applies.
2.5
WARF and ES
Technology
. ES grants Lifeline a sublicense to use WARF
Technology, and WARF Materials and ES Technology for the purpose of producing,
making, and distributing any Joint Products that Lifeline is entitled to
produce, make, and distribute but, except as required for such purpose, no other
license or sublicense of WARF Technology, WARF Materials, or ES Technology is
granted or shall be implied by this Agreement. Lifeline agrees that
(a) WARF Technology and WARF Materials may be used by Lifeline only for the
purpose of producing, making, and distributing Joint Products under this
Agreement; (b) Lifeline shall not sell, use, or transfer WARF Materials to any
third party except as permitted by the WARF license; (c) Lifeline shall not use
WARF Technology or WARF Materials in any manner not permitted by the WARF
license, and (d) Lifeline’s right to use WARF Technology and WARF Materials
shall terminate upon the termination of the WARF license.
ARTICLE 3 – MARKETING; SALES
AND DISTRIBUTION
3.1
Marketing
Efforts
. The Parties shall each use commercially reasonable
efforts to market and sell Joint Products through each Party’s sales force and
distributor network, and shall use best efforts to collaborate in marketing
Joint Products jointly where appropriate so as to avoid conflicts between the
parties’ sales efforts.
3.2
Embryome.com
. Pricing
and terms of marketing and sale of Joint Products through Embryome.com
technology shall be subject to ES’s approval.
3.3
Branding
. Joint
Products shall be sold under the Lifeline or ES brand as the Parties shall
determine by mutual agreement.
3.4
Use of Joint
Products
. Joint Products will be produced, marketed,
distributed, and sold as research tools only, including in drug discovery and
development, and not for the treatment of disease in humans, or for diagnosis,
prognosis, screening or detection of disease in humans. Each Party
shall sell Joint Products on terms that provided that the Joint Products will be
used by the purchaser only for the purposes permitted in this
paragraph.
3.5
Limit of
Obligations
. Nothing in this Agreement shall require either
Party to sell Joint Products produced by the other Party. Any Party
that produces, markets, or distributes a Joint Product may, upon thirty days
notice to the other Parties, discontinue production, marketing, or distribution
of the Joint Product.
3.6
Costs and
Expenses
. Except for royalties payable to WARF and ACT,
Production Costs, and Marketing Costs, which shall be reimbursed as provided in
Article 5, each Party shall pay its own costs and expenses incurred in
connection with the performance of its obligations under this Agreement, unless
otherwise expressly provided in this Agreement.
3.7
Competition
. Nothing
in this Agreement shall prevent, preclude, or limit the right of the parties to
compete with each other in the development, licensing, production, marketing,
distribution, and sale of technology and products, including products that may
directly compete with Joint Products. Lifeline shall have no interest
in or right to participate in revenues or profits from the sale of ES Products
or from the licensing or sublicensing of ES Technology or WARF Technology by ES
or BioTime, or in any production, marketing, and/or sales agreements ES or
BioTime may make, except to the extent that Net Revenues from sale of Joint
Products are generated through such agreements, in which event such Net Revenues
shall be shared as provided herein. ES and BioTime shall have no
interest in or right to participate in revenues from the sale of Lifeline
Products or from the licensing or sublicensing of Lifeline Technology or Cell
Technology by Lifeline, or in any production, marketing, and/or sales agreements
Lifeline may make, except to the extent that Net Revenues from sale of Joint
Products are generated through such agreements, in which event such Net Revenues
shall be shared as provided herein.
ARTICLE 4—CAPITAL
PAYMENT
4.1
Payment to
Lifeline
. Within two business days after the Parties have
executed and delivered this Agreement, BioTime or ES will pay Lifeline $250,000
to enable Lifeline to engage in the production, making, and distribution of
Joint Products.
ARTICLE 5 – NET
REVENUES
5.1
Certain
Distributors
. Regardless of which Party produces the Joint
Product, Net Revenues from the sale of a Joint Product sold to or through those
distributors with which Lifeline has a pre-existing relationship (which have
been disclosed to ES and BioTime by confidential memorandum), shall be allocated
between, and paid to, the Parties as follows:
(a) First,
to the Parties in an amount equal to their respective royalty obligations under
Article 7 with respect to the sale of the Joint Product;
(b) Second,
to the Party or Parties that produced the Joint Product, to reimburse their
Production Costs, and to the Parties that marketed the Joint Product, to
reimburse their Marketing Costs; and
(c) Finally,
50% to ES and 50% to Lifeline.
5.2
Joint
Production
. Net Revenues from the sale of a Joint Product not
covered by Section 5.1 but which is produced by both ES and Lifeline shall be
shall be allocated between, and paid to, the Parties in the manner provided in
Section 5.1.
5.3
Production Requested by
Other Party
. Net Revenues from the sale of a Joint Product not
covered by Section 5.1 or Section 5.2 and which was initially produced by one
Party but which is produced for distribution by the other Party at the request
of the Party that initially produced the Joint Product shall be allocated
between, and paid to, the Parties in the manner provided in Section
5.1.
5.4
Other
Cases
. In the absence of a supplemental agreement between the
Parties, Net Revenues from the sale of a Joint Product not covered by Section
5.1, Section 5.2 or Section 5.3 shall be shall be allocated between, and paid
to, the Parties as follows:
(a) First,
to the Parties in an amount equal to their respective royalty obligations under
Article 7 with respect to the sale of the Joint Product;
(b) Second,
subject to Section 5.6(b), to the Party that produced the Joint Product for
distribution, an amount equal to the greater of (i) 90% of the Net Revenues
remaining after the allocation under clause (a) of this Section, and (ii) the
amount that would have been allocated to the Party if the provisions of Section
5.1 applied; and
(c) The
balance of the Net Revenue will be allocated to the Party that did not produce
the Joint Product for distribution
5.5
Reimbursement
Payment
. The first $250,000 of Net Revenues that otherwise
would be allocated to Lifeline under Section 5.1(c) (including Net Revenues from
Joint Products described in Sections 5.1, 5.2, and 5.3) or Section 5.4(c) shall
be allocated instead to ES as a priority return on its capital investment under
Article 4.
5.6
Recovery of
Costs
.
(a) To
the extent that Net Revenues during any calendar quarter are less than the
Production Costs, Marketing Costs, and royalty payments incurred by the Party
during that period, the unrecovered costs will be carried forward into each
successive calendar quarter until paid from Net Revenues, before Net Revenues
are otherwise allocated to and shared by the Parties.
(b) If
ES provides collaborative technical assistance to Lifeline under Section 2.2(c),
the Production Cost incurred by ES shall be reimbursed to ES from a portion of
the Net
Revenue
allocable to Lifeline under Section 5.4(b), and such reimbursement shall be paid
contemporaneously with the allocation of Net Revenues to Lifeline.
5.7
Allocation of Net
Revenue
. Net Revenues shall be allocated between the Parties
in the manner provided in this Article 5 regardless of which Party or Parties
sold the Joint Product(s), such that each Party shall pay over to the other
Party such share of Net Revenue as may be required to effect the allocation of
Net Revenues determined under Sections 5.1 through 5.4, as applicable, subject
to Section 5.5 and Section 5.6.
5.8
Payment Due
Date
. Not later than 25 days after the end of each calendar
quarter, the Parties will reconcile accounts of Joint Products sold and shall
remit to each other the other Party’s share of Net Revenue.
5.9
Currency
. All
payments due hereunder shall be paid in United States dollars. If any
currency conversion shall be required in connection with the payment of Net
Revenues or other amounts due under this Agreement, such conversion shall be at
the rate of conversion reported in the Wall Street Journal on the last working
day of the calendar quarter to which the payment relates.
5.10
Late
Payment
. If any Net Revenue is not paid by a Party to the
other Party when due, interest shall accrue on the overdue amount at the Prime
Rate plus two percent, or the maximum rate allowed under applicable law,
whichever is less, from the date when such payment should have been made until
paid in full. Such interest shall be paid with the past due Net
Revenue. The Prime Rate shall be the interest rate reported as the
“prime rate” in
The
Wall Street Journal
on the date the payment was due.
5.11
Overhead
Costs
. Parties will meet, initially on a quarterly basis and
less often upon mutual consent, to: work together in good faith to share
financial information and calculations, within the constraints of SEC rules,
related to: the allocation of overhead costs; develop and agree upon accounting
methods of allocating overhead costs in accordance with Generally Accepted
Accounting Principles; and review and revise the percentage figures used to
allocate overhead costs to Marketing Cost and Production Cost.
ARTICLE 6 - REPORTS AND
RECORDS
6.1
Maintenance of
Records
. Each Party shall keep complete and accurate records
and accounts of all Joint Products sold by the Party, all royalties payable by
the Party to ACT or WARF, the Party’s Production Costs and Marketing
Costs.
6.2
Monthly
Reports
. Each Party shall provide each other Party with a
monthly report of Joint Product sales, including a description of each Joint
Product sold, the amount (units) of the Joint Product sold, and the gross sales
price, each deduction from gross sales made in the calculation of Net Revenues,
all royalties paid or payable, and all Production Costs and Marketing
Costs. The monthly report shall be delivered no later than 15 days
after the end of each calendar month.
6.3
Audit
Rights
. Each Party’s records and accounts of Joint Products
sold shall be kept at their principal place of business or at such other
location as may be agreed upon by the Parties. Said records and
accounts shall be open, upon reasonable advance notice (and no more frequently
than once per calendar year), for three (3) years following the end of the
calendar year to which they pertain, to the inspection of the other Party or its
agents for the purpose of verifying Net Revenues, Production Costs, and
Marketing Costs, or compliance in other respects with this
Agreement. If any such audit determines that the reported sales or
Net Revenues were less than 90% of the actual amount for the period in question,
or that royalties paid or Production Costs or Marketing Costs, were less than
90% of the amount reported for the period, the Party whose records were audited
shall bear the cost of such audit.
ARTICLE
7—SALE OF ES PROUCTS AND LIFELINE PRODUCTS
7.1
Sale of ES Products by
Lifeline
. Lifeline may sell, for its own account and under
either ES brand names or Lifeline brand names, ES Products consisting of (a)
human embryonic stem cells, (b) differentiated human stem cells, (c) media for
the growth of human embryonic stem cells or differentiated human stem cells, and
(d) materials useful for the culture of cells. ES agrees to sell ES
Products described in this paragraph to Lifeline at prices to be determined by
mutual agreement, plus shipping, applicable sales and VAT taxes, and
insurance. This Section 7.1 shall not apply to any ES Product
acquired or developed by ES under a license or other agreement with a third
party that would prohibit ES from selling the ES Product to Lifeline under the
terms of this Section 7.1.
7.2
Sale of Lifeline Products by
ES
. ES may sell, for its own account and under either ES brand
names or Lifeline brand names, Lifeline Products consisting of (a) human
embryonic stem cells, (b) differentiated human stem cells, (c) media for the
growth of human embryonic stem cells or differentiated human stem cells, and (d)
materials useful for the culture of cells. Lifeline agrees to sell
Lifeline Products described in this paragraph to ES at prices to be determined
by mutual agreement, plus shipping, applicable sales and VAT taxes, and
insurance. This Section 7.2 shall not apply to any Lifeline Product
acquired or developed by Lifeline under a license or other agreement with a
third party that would prohibit Lifeline from selling the Lifeline Product to ES
under the terms of this Section 7.2.
7.3 Payment
of the purchase price for ES Products sold to Lifeline shall be on such terms as
ES may require. Payment of the purchase price for Lifeline Products
sold to ES shall be on such terms as Lifeline may require. Neither
party shall be obligated to extend credit to the other party.
7.4
The Provisions of Article 5 shall not apply to sales of ES Products by Lifeline,
or sales of Lifeline Products sold by ES, under this Article 7.
ARTICLE 8 – LICENSED
TECHNOLOGY AND PATENT RIGHTS
8.1
WARF
License
. BioTime and ES shall fully and timely perform their
respective obligations under its license agreement with WARF in order to keep
its license to use WARF Technology and WARF Materials in full force and
effect. BioTime or ES shall promptly notify Lifeline of any material
change in the terms of the WARF license, or the termination of the WARF
license.
(a) ES
shall be responsible for the payment of all royalties owed to WARF from the sale
of Joint Products, as provided in the license agreement between BioTime and
WARF, and such royalties shall be reimbursed from Net Revenues as provided in
Article 5.
8.2
Cell Technology
Licenses
. Lifeline shall fully and timely perform its
obligations under its license agreements with Advanced Cell Technology, Inc.
(“ACT”) in order to keep its licenses to use Cell Technology in full force and
effect. Lifeline shall promptly notify BioTime and ES of any material
change in the terms of the Cell Technology license, or the termination of the
Cell Technology license.
(a) Lifeline
shall be responsible for the payment of all royalties owed to ACT from the sale
of Joint Products, as provided in the license agreements between Lifeline and
ACT, and such royalties shall be reimbursed from Net Revenues as provided in
Article 5.
(b)
LifeLine
shall notify BioTime and ES of the occurrence of (i) any failure of LifeLine to
make any payment or to perform any other obligation under the Cell Technology
license agreements, and (ii) the receipt of any notice from ACT stating that any
breach or default under any of the Cell Technology license agreements has
occurred. Such notice shall be given to BioTime and ES within five
(5) days after the occurrence of the applicable event. BioTime and ES
shall have the right (but not the obligation) to make any payment or to take any
other action required to cure any default or potential default by LifeLine under
the Cell Technology license agreements. If BioTime or ES makes any
payment or incurs any expense to cure or prevent a breach or default by LifeLine
under any of the Cell Technology license agreements (“Default Cure Payments”),
120% of the amount of such Default Cure Payments shall be reimbursed to BioTime
and ES upon demand, and if such amount is not paid to BioTime or ES within five
days of a demand for payment, the unpaid amount shall accrue interest at the
rate of 15% per annum until paid in full. Until 120% of all Default
Cure Payments, with interest accrued, have been repaid to BioTime and ES,
Net Revenues that
otherwise would be allocated to Lifeline under Section 5.1(c) (including Net
Revenues from Joint Products described in Sections 5.1, 5.2, and 5.3) or Section
5.4(c) shall be allocated instead to
BioTime and ES until BioTime and ES
have received a return of 120% of the Default Cure Payments, plus accrued
interest. LifeLine agrees that the payment of Default Cure Payments
will impose a financial burden on BioTime and ES and will provide an economic
benefit to LifeLine beyond the financial obligations and benefits that the
Parties have agreed to allocate among themselves under this Agreement, and that
LifeLine estimates that the economic benefit that will inure to it from a cure
of its default will equal or exceed 120% of the Default Cure
Payment.
8.3
Ownership of
Patents
. Any invention or discovery, whether or not
patentable, and any patents, patent applications, or technical know-how
developed through the efforts of any Party to produce a Joint Product shall be
owned by the Party or Parties that employ the inventors. That is to
say, if all of the inventors on a patent or patent application are employed by
one Party, then the patent or patent application will be owned by that one
Party. If inventors are listed from two or more Parties, then the patent or
patent application shall be jointly owned by the Parties whose employees are so
listed as inventors.
8.4
License of
Patents
. If a Party obtains a patent covering a Joint Product,
the other Party shall have a non-exclusive license to use such patent for the
purpose of producing, distributing and marketing the Joint Product to the extent
permitted under, and subject to the terms of, this Agreement.
8.5
Certain
Acknowledgements
. Lifeline acknowledges that the WARF license
agreement permitting the use of WARF Technology and WARF Materials is
non-exclusive, and grants WARF a non-exclusive license to use for non-commercial
purposes Joint Products and any other materials and patents developed using WARF
Materials and WARF Technology. BioTime and ES acknowledge that the
Lifeline’s right to some aspects of the Cell Technology is non
exclusive.
8.8
Licenses of Intellectual
Property; Bankruptcy Code
. The Parties agree that the
sublicenses granted to BioTime and ES by Lifeline to use Cell Technology, the
license granted by Lifeline to ES and BioTime to use Lifeline know-how, the
sublicenses granted by BioTime and ES to use WARF Technology, the license
granted by ES to Lifeline to use ES Technology, the license granted by Lifeline
to ES to use Lifeline Technology, and any and all licenses granted by any Party
to the other Party under Section 8.4, constitute licenses of “intellectual
property” as defined in the United States Bankruptcy Code (the “Bankruptcy
Code”) and as used in Section 365(n) of the Bankruptcy Code. The
Parties agree that the know-how included in Cell Technology sublicensed to
BioTime and ES by Lifeline, the Lifeline Technology licensed by Lifeline to ES
under this Agreement, and the ES Technology licensed by ES to Lifeline under
this Agreement includes trade secrets. The Parties also agree that
the payments of Net Revenues required to be made by the Parties to each other
under Article 5 of this Agreement constitute “royalties” under Section 365(n) of
the Bankruptcy Code.
ARTICLE 9 - PROSECUTION OF
INFRINGERS
AND DEFENSE OF PATENT
RIGHTS
9.1
Notice
. The
Parties agree to notify each other in writing of (a) any actual or threatened
infringement, by a third person, of any patents covering Cell Technology, WARF
Technology, ES Technology or any other patent pertaining to a Joint Product, or
(b) any claim of invalidity or unenforceability of any patent owned by a Party
covering a Joint Product.
9.2
Prosecution and Defense of
Patent Rights
. The Party or Parties owning the patent covering
a Joint Product shall have the right (but not the obligation) to prosecute any
infringement or defend any claims, as applicable, pertaining to such
patent. Each Party shall, at
the
expense of the owner of the patent, provide reasonable assistance to the other
Party in connection with the prosecution or defense of such claims.
9.3
Judgments and
Awards
. Any judgment, award, or settlement proceeds arising
from any claim, demand, lawsuit or other proceeding commenced or joined by
either Party against any third person infringing or allegedly infringing a
patent covering a Joint Product (“Proceeds”) shall be allocated between the
Parties in the following manner: (a) first (in the ratio of expenses
incurred by each Party in the action) to reimburse each Party for any expenses
incurred in the action; and (b) any Proceeds on account of the Party’s
respective lost profits shall be treated as Net Revenues, and shall be allocated
between the Parties in the manner provided in Article 5 for the allocation of
Net Revenues from the sale of such Joint Product; provided, that if royalties
payable, Production Costs, or Marketing Costs were taken into account in
determining the Proceeds, those costs shall not be deducted again in allocating
the Proceeds among the Parties.
9.4
Alleged Infringement of
Patents or Trade Secrets
. If a claim or lawsuit is brought
against a Party (“Defendant”) alleging infringement of any patent or
misappropriation of any trade secret owned by a third person arising from the
production, distribution, sale or use of any Joint Product, the Defendant shall
promptly give each other Party written notice to of such infringement claim and
shall provide to each other Party all information in the Defendant’s possession
regarding such infringement claim, within sixty (60) days after receiving such
notice. Each Party shall advise the other of the course of action it
intends to take to defend such infringement claim, and shall keep the other
Party informed of the progress of any litigation arising from the infringement
claim. No Party shall enter into any settlement, consent judgment, or
other voluntary final disposition of any infringement action that admits the
invalidity or unenforceability of any patent pertaining to a Joint Product or
that would adversely affect the rights of any other Party, without the prior
written consent of the other Party whose rights are so affected, which consent
may not be unreasonably withheld, conditioned or delayed.
ARTICLE 10 – INDEMNIFICATION
AND
LIMITATION OF
LIABILITY
10.1
Indemnification
. BioTime
and ES agree to indemnify, defend and hold harmless Lifeline from and against
all liabilities of any kind whatsoever, including legal expenses and reasonable
attorneys' fees, arising out of or in connection with any breach of any
representation or warranty of BioTime or ES under this
Agreement. Lifeline agrees to indemnify, defend and hold harmless
BioTime and ES from and against all liabilities of any kind whatsoever,
including legal expenses and reasonable attorneys' fees, arising out of any
breach of any representation or warranty of Lifeline under this
Agreement. If a claim for indemnification relates to any claim or
lawsuit by a third person against the indemnified Party, any indemnification
obligations set forth in this Agreement shall be subject to the following
conditions: (i) the indemnified Party shall notify the indemnifying Party in
writing promptly upon learning of any claim or lawsuit for which indemnification
is sought; (ii) the indemnifying Party shall have control of the defense or
settlement,
provided
that
the indemnified Party shall have the right (but not the obligation)
to participate in such defense or settlement with counsel at its selection and
at its sole expense; and
(iii) the
indemnified Party shall reasonably cooperate with the defense, at the
indemnifying Party’s expense.
10.2
Disclaimer of
Warranties
. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS
AGREEMENT, EACH PARTY, AND ITS DIRECTORS, MANAGERS, OFFICERS, EMPLOYEES, AND
AFILIATES, MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS
CLAIMS, ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER
OR NOT DISCOVERABLE, WITH RESPECT TO ANY JOINT PRODUCT.
NOTHING IN THIS AGREEMENT SHALL BE
CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY BIOTIME OR ES THAT THE
PRACTICE OF THE WARF TECHNOLOGY OR ES TECHNOLOGY SHALL NOT INFRINGE THE PATENT
RIGHTS OF ANY THIRD PARTY.
NOTHING IN THIS AGREEMENT SHALL BE
CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY LIFELINE THAT THE
PRACTICE OF THE CELL TECHNOLOGY SHALL NOT INFRINGE THE PATENT RIGHTS OF ANY
THIRD PARTY.
10.3
Limitation on
Liability
. IN NO EVENT SHALL ANY PARTY, OR ITS DIRECTORS,
MANAGERS, OFFICERS, EMPLOYEES AND AFFILIATES, BE LIABLE FOR INCIDENTAL OR
CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO
PROPERTY AND LOST PROFITS ARISING FROM THE PRODUCTION AND SALE OF JOINT PRODUCTS
UNDER THIS AGREEMENT.
ARTICLE 11 –
TERMINATION
11.1
Expiration
. This
Agreement shall be effective on the Effective Date and shall terminate in twenty
(20) years or upon the expiration of the last to expire of the patents covering
Cell Technology, WARF Technology, or any Joint Product, whichever is later,
unless sooner terminated as provided in this Article 11.
11.2
Breach
. Any
Party may terminate this Agreement and the rights, privileges and license
granted hereunder by written notice upon a breach or default of this Agreement
by the other Party, subject to the following notice and cure
provisions:
(a) If
the breach is non-payment of any amount due, the breach is not cured within
thirty (30) days of receipt of written notice of such non-payment;
or
(b) If
the breach is one other than non-payment of any amount due, the breach is not
cured within thirty (30) days of a written request to remedy such breach, or if
the breach
cannot be
cured within said thirty (30) day period, the failure of the Party in breach,
within said thirty (30) day period, to commence action necessary to cure the
breach, and to proceed with reasonable diligence thereafter to cure the
breach.
Such
termination shall become automatically effective unless the Party in breach
shall have cured the breach prior to the expiration of the applicable cure
period.
11.3
Other Grounds for
Termination
.
(a) BioTime
and ES shall have the right to terminate this Agreement at any time immediately
upon notice to Lifeline if any claim is brought against BioTime or ES alleging
that the use of Cell Technology, WARF Technology, or WARF Materials infringes on
the patent or other intellectual property rights of any third
person. Notwithstanding any such notice of termination, BioTime and
ES shall remain obligated to pay all amounts due Lifeline under this Agreement
through the effective date of the termination.
(b) Lifeline
shall have the right to terminate this Agreement at any time immediately upon
notice to BioTime and ES if any claim is brought against Lifeline alleging that
the use of ES Technology, WARF Technology, or WARF Materials infringes on the
patent or other intellectual property rights of any third
person. Notwithstanding any such notice of termination, Lifeline
shall remain obligated to pay all amounts due BioTime and ES under this
Agreement through the effective date of the termination.
11.4
Survival
. Upon
termination of this Agreement for any reason, nothing herein shall be construed
to release either Party from any obligation that matured prior to the effective
date of such termination. Article1, Article 10, Article 12, Article
13, Article 14, Section 6.2, and this Section 11.4, and any other Sections or
provisions which by their nature are intended to survive termination, shall
survive any such termination.
ARTICLE 12 -
CONFIDENTIALITY
12.1
Confidential
Information
“Confidential Information” means (a) confidential
or proprietary information of BioTime or ES (including scientific knowledge,
know-how, methods, processes, inventions, techniques, and formulae) relating to
ES Technology, (b) confidential or proprietary information relating to Cell
Technology licensed to Lifeline and designated as being confidential or secret
under the Cell Technology license agreement, (c) confidential or proprietary
information relating to WARF Technology or WARF Materials licensed to BioTime or
ES and designated as being confidential or secret under the WARF Technology
license agreement, (d) confidential or proprietary information developed by a
Party (including scientific knowledge, know-how, methods, processes, inventions,
techniques, and formulae) relating to the use of Cell Technology or WARF
Technology in the production or use of a Joint Product, (e) confidential or
proprietary information (including scientific knowledge, know-how, methods,
processes, inventions, techniques, and formulae) developed by a Party relating
to the production or use of a Joint Product, other than information described in
clause (d), (f) Joint Product sales data, (g) marketing plans, methods, and
studies, (h) the identity of customers and customer
requirements,
(i) Production Costs, and (j) such other information that is designated as
Confidential Information in this Agreement, or that a Party maintains as
confidential and designates as Confidential Information in a writing delivered
to another Party. Confidential Information may be in written,
graphic, oral or physical form and may include designs, sketches, photographs,
drawings, specifications, reports, data, plans or other records, biological
materials, and/or software. Confidential Information shall not
include:
|
(a)
|
information
which is, or later becomes, generally available to the public through no
fault of the recipient;
|
|
(b)
|
information
which is provided to the recipient by an independent third party having no
obligation to a Party or to WARF or ACT to keep the information
secret;
|
|
(c)
|
information
which the recipient can establish by written documentation was previously
known to it;
|
|
(d)
|
information
which the recipient can establish by written documentation was
independently developed by it without reference to the Confidential
Information of any other Party; or
|
|
(e)
|
information
required to be disclosed by a Party under any law or government
regulation, or under any order of any court, government agency, or other
adjudicative or administrative body having jurisdiction over the
Party.
|
12.2
Protection of Confidential
Information
. During the term of this Agreement, the Parties
may provide each other with Confidential Information. Each Party
intends to maintain the confidential or trade secret status of its Confidential
Information. Each Party shall exercise reasonable care, and not less
than the standard of care it exercises in protecting the secrecy of its own
Confidential Information, to protect the Confidential Information received from
the other Party from disclosure to third persons. Neither Party shall
disclose Confidential Information (other than the Party’s own Confidential
Information) to any third person without the written permission of the other
Party (or ACT in the case of Confidential Information described in clause (b) of
Section 12.1, or WARF in the case of Confidential Information described in
clause (c) of Section 12.1); provided, that each Party may disclose Confidential
Information to the Party’s employees, officers, directors, attorneys, and
contractors who have a need to know such information in connection with the
performance of services for the Party. Upon termination or expiration
of this Agreement, each Party shall comply with the other’s written request to
return all of the other Party’s Confidential Information that is in written or
tangible form. No Party is granted any license to use another Party’s
Confidential Information for any purpose other than the production, marketing,
distribution, and sale of Joint Products under this Agreement or the enforcement
of a Party’s rights under this Agreement. The obligations of the
Parties under this Article 12 shall survive any expiration or termination of
this Agreement.
ARTICLE 13 - PAYMENTS,
NOTICES, AND OTHER COMMUNICATIONS
Any payment, notice or other
communication required or otherwise given pursuant to this Agreement shall be in
writing and sent by certified first class mail, return receipt requested,
postage prepaid, or by nationally recognized next business day delivery service
addressed to the parties at the following addresses or such other addresses as
such party furnishes to the other party in accordance with this
paragraph. Such notices, payments or other communications shall be
effective upon receipt.
If to
Lifeline: LifeLine
Cell Technology, LLC,2595 Jason Court
Oceanside, CA 92056
Attention: Jeffrey
Janus
If to
BioTime: BioTime,
Inc.
|
1301
Harbor Bay Parkway, Suite 100
|
|
Alameda,
California 94502
|
|
Attention:
Michael D. West, CEO
|
If
to ES:
|
Embryome
Sciences, Inc.
|
|
1301
Harbor Bay Parkway, Suite 100
|
|
Alameda,
California 94502
|
|
Attention:
Michael D. West, CEO
|
|
ARTICLE 14 -
REPRESENTATIONS AND
WARRANTIES
|
14.1
Enforceable
Agreement--Lifeline
. Lifeline represents and warrants that (a)
it has licensed the Cell Technology, (b) it has the full legal and contractual
right and power to grant the sublicenses granted hereunder, (c) this Agreement
constitutes the binding, legal agreement of Lifeline, enforceable in accordance
with its terms, (d) the execution and delivery of this Agreement by Lifeline,
and the performance of Lifeline’s obligations under this Agreement, will not
violate, contravene or conflict with (i) any other agreement to which Lifeline
is a party or by which it is bound, or (ii) any law, rule or regulation
applicable to Lifeline.
14.2
No Infringement—Cell
Technology
. To the best of Lifeline’s knowledge, the use of
the Cell Technology to produce, make, and distribute Joint Products will not
infringe on any patent or trade secret or other intellectual property right of
any third person. Lifeline has never received any complaint, claim,
demand, or notice alleging that the Cell Technology infringes on any patent or
trade secret or other intellectual property right of any third
person.
14.3
Enforceable
Agreement--BioTime
. BioTime represents and warrants that (a) it has
licensed the WARF Technology, (b) it has the full legal and contractual right
and power to grant the sublicenses granted hereunder, (c) this Agreement
constitutes the binding, legal agreement of BioTime, enforceable in accordance
with its terms, and (d) the execution and delivery of this Agreement by BioTime,
and the performance of BioTime’s obligations under this
Agreement,
will not
violate, contravene or conflict with (i) any other agreement to which BioTime is
a party or by which it is bound, or (ii) any law, rule or regulation applicable
to BioTime.
14.4
Enforceable
Agreement--ES
. ES represents and warrants that (a) this
Agreement constitutes the binding, legal agreement of ES, enforceable in
accordance with its terms, and (b) the execution and delivery of this Agreement
by ES, and the performance of ES’s obligations under this Agreement, will not
violate, contravene or conflict with (i) any other agreement to which ES is a
party or by which it is bound, or (ii) any law, rule or regulation applicable to
ES.
14.5
No Infringement—WARF
Technology.
To the best of BioTime’s knowledge, the use of the
WARF Technology and ES Technology to develop Joint Products will not infringe on
any patent or trade secret or other intellectual property right of any third
person. BioTime has never received any complaint, claim, demand, or
notice alleging that the WARF Technology or the ES Technology infringes on any
patent or trade secret or other intellectual property right of any third
person.
14.6
Survival
. This
Article 14 shall survive expiration or termination of this
Agreement.
ARTICLE 15 - MISCELLANEOUS
PROVISIONS
15.1
Compliance With
Law
. Each party shall comply with all local, state, federal
and international laws and regulations relating to the production, sale, use,
distribution, and export of Joint Products.
15.2
No Partnership or
Agency
. Nothing herein shall be deemed to constitute any Party
as the agent or representative of any other Party. Each Party shall
be an independent contractor, not an employee or partner of any other Party, and
the manner in which each Party renders its services under this Agreement shall
be within its sole discretion. A Party shall not be responsible for
the acts or omissions of any other Party, nor shall a Party have authority to
speak for, represent or obligate any other Party in any way without prior
written authority from the other Party.
15.3
Patent
Marking
. To the extent commercially feasible, and consistent
with prevailing business practices, all Joint Products distributed or sold under
this Agreement will be marked (or will be contained in packaging that is labeled
or marked) with the number of each issued patent that applies to such Joint
Product.
15.4
Applicable
Law
. This Agreement shall be construed, governed, interpreted
and applied in accordance with the laws of the State of California, without
regard to principles of conflicts of law thereof.
15.5
Entire Agreement;
Amendment
. This Agreement sets forth the entire agreement and
understanding of the Parties as to the subject matter of this
Agreement. This Agreement shall not be amended or modified except by
the execution of a written instrument subscribed to by the Party to be
charged.
15.6
Severability
. The
provisions of this Agreement are severable, and in the event that any provisions
of this Agreement shall be determined to be invalid or unenforceable under any
controlling body of the law, such invalidity or unenforceability shall not in
any way affect the validity or enforceability of the remaining provisions
hereof.
15.7
Waiver
. The
failure of a Party to assert a right under this Agreement or to insist upon
compliance with any term or condition of this Agreement shall not constitute a
waiver of that right or excuse a similar subsequent failure to perform any such
term or condition by the other Party, in the absence of an express written
waiver signed by the Party to be charged.
15.8
Parties
. This
Agreement shall be binding on, and shall inure to the benefit of, Lifeline,
BioTime, and ES, and their respective successors and assigns.
15.9
Sublicense and
Assignment
. BioTime and ES shall not sublicense or assign any
rights to use Cell Technology without first obtaining (a) the prior written
consent of LifeLine, and (b) any consent of ACT required under the ACT license
agreements. LifeLine shall not sublicense or assign any right to use
WARF Technology or WARF Materials without (a) the prior written consent of
BioTime and ES, and (b) any consent of WARF required under the WARF license
agreement. LifeLine shall not sublicense or assign any right to use
ES Technology without obtaining the prior written consent of ES. The
foregoing provisions of this Section 15.9 shall not restrict the rights of the
Parties to sell Joint Products under the terms of this Agreement.
15.10
Counterparts
.
This
Agreement may be executed in any number of counterparts, each of which shall be
deemed an original but all of which together shall constitute one and the same
instrument. Any document, including, without limitation, counterparts
of this Agreement, may be transmitted by facsimile or other electronic means and
upon receipt shall be deemed an original; provided that upon demand of the
recipient, the sender within a reasonable time of such demand shall mail or
deliver an originally signed copy of such document.
15.11
Persons
. All
references to a “person” shall include a natural person or a corporation,
partnership, limited liability company, trust, or other legal
entity.
IN WITNESS WHEREOF, the Parties have
duly executed this Agreement as of the Effective Date set forth
above.
LifeLine
Cell Technology, LLC
By: /s/
Jeffrey
Janus
Printed
Name: Jeffrey
Janus
Title: CEO
BioTime,
Inc.
By: /s/
Michael
West
Printed
Name: Michael
West
Title: CEO
Embryome
Sciences, Inc.
By: /s/
Michael
West
Printed
Name: Michael
West
Title: CEO
SCHEDLUE
1
Exclusive
License Agreement dated May 14, 2004 by and between Advanced Cell Technology,
Inc., and PacGen Cellco, LLC, as amended, August 25, 2005, pertaining to certain
patents and know-how owned by ACT.
Exclusive
License Agreement dated May 14, 2004 by and between Advanced Cell Technology,
Inc., and PacGen Cellco, LLC, as amended, August 25, 2005, pertaining to certain
patents and know-how owned by Infigen and licensed to ACT.
Exclusive
License Agreement dated May 14, 2004 by and between Advanced Cell Technology,
Inc., and PacGen Cellco, LLC, as amended, August 25, 2005, pertaining to certain
patents and know-how owned by the University of Massachusetts and licensed to
ACT.
19
EXCLUSIVE LICENSE
AGREEMENT
This Exclusive License Agreement
(“Agreement”) is made and entered into as of the 10th day of July, 2008 (the
“Effective Date”), by and between Advanced Cell Technology, Inc., a Delaware
corporation with offices located at 11100 Santa Monica Blvd, Suite 850, Los
Angeles, CA 90025 (“ACT”), Embryome Sciences, Inc., a California corporation
(“LICENSEE”), with offices located at 1301 Harbor Bay Parkway, Suite 100,
Alameda, California 94502. ACT and LICENSEE are sometimes hereinafter referred
to as the “Parties”.
WITNESSETH
WHEREAS, ACT owns or has licensed with
a sublicensable interest the CELLS, PATENT RIGHTS and KNOW-HOW; and
WHEREAS, LICENSEE desires to obtain an
exclusive license from ACT to use the CELLS, PATENT RIGHTS and KNOW-HOW upon the
terms and conditions set forth in this Agreement; and
WHEREAS, ACT is willing to grant such a
license to LICENSEE upon the terms and conditions set forth in this
Agreement;
NOW, THEREFORE, in consideration of the
premises and the mutual covenants contained herein, the Parties hereto agree as
follows:
ARTICLE 1 -
DEFINITIONS
For the purposes of this Agreement, the
following words and phrases shall have the following meanings:
1.1 “AFFILIATE”
means any corporation, limited liability company, limited partnership or other
entity in control of, controlled by, or under common control with
LICENSEE.
1.2 “CELLS
or CELL LINES” means the cells and cell lines identified in
Exhibit A
attached
hereto that are covered by (i.e., made or developed using) the PATENT RIGHTS or
KNOW-HOW and/or are provided to LICENSEE by ACT in accordance with the
provisions of Articles 2 or 3, as applicable, of this Agreement.
1.3 “COMBINATION
PRODUCT” means a product that contains a LICENSED PRODUCT component and at least
one other component that has independent research, diagnostic or therapeutic
utility, could reasonably be sold separately and has economic value of its
own.
1.4 “CONFIDENTIAL
INFORMATION” means confidential or proprietary information of ACT or LICENSEE
relating to the PATENT RIGHTS, KNOW-HOW, LICENSED PROCESSES, LICENSED SERVICES
or LICENSED PRODUCTS. CONFIDENTIAL INFORMATION may be in written,
graphic, oral or physical form and may include scientific knowledge, know-how,
processes, inventions, techniques, formulae, products, business operations,
customer requirements, designs, sketches, photographs, drawings, specifications,
reports, studies, findings, data, plans or other records,
biological
materials, and/or software. CONFIDENTIAL INFORMATION shall not
include: (a) information which is, or later becomes, generally
available to the public through no fault of the recipient; (b) information which
is provided to the recipient by an independent third party having no obligation
to keep the information secret; (c) information which the recipient can
establish by written documentation was previously known to it; or (d)
information which the recipient can establish by written documentation was
independently developed by it without reference to the CONFIDENTIAL
INFORMATION.
1.5 “KNOW-HOW”
means all compositions of matter, techniques and data and other know-how and
technical information including inventions (whether or not patentable),
improvements and developments, practices, methods, concepts, trade secrets,
documents, computer data, computer slide illustrations, computer code,
apparatus, test data, analytical and quality control data, formulation,
manufacturing, patent data or descriptions, development information, drawings,
specifications, designs, plans, proposals and technical data and manuals and all
other CONFIDENTIAL INFORMATION that is owned or controlled by ACT as of the
Effective Date, and that specifically relates to the subject matter (a)
described in or claimed by the PATENT RIGHTS, (b) described in or claimed by the
abandoned provisional applications including but not limited to: "Methods to
accelerate the isolation of novel cell strains from pluripotent stem cells and
cells obtained thereby" applications numbers 103080-P66-071,103080-P67-071), and
(c) disclosed in the published paper and associated supplementary information
(West, M.D., Sargent, R.G., Long, J., Brown, C., Chu, J-S., Kessler, S.,
Derugin, N., Sampathkumar, J., Burrows, C., Vaziri, H., Williams, R., Chapman,
K.B., Larocca, D., Loring, J.F., and Murai, J. 2008. The ACTCellerate
Initiative: large-scale combinatorial cloning of novel human embryonic stem cell
derivatives. Reg. Med. 3(3): 287-308.).
1.6 “LICENSED
PROCESS” means any process or method, the development, use, practice,
or sale of which (1) is covered in whole or in part by, or cannot be performed
without infringing, a VALID CLAIM of the PATENT RIGHTS in the country in which
such LICENSED PROCESS is practiced or sold, or (2) otherwise utilizes the
KNOW-HOW.
1.7 “LICENSED
PRODUCT” means any product, or part thereof or derived therefrom, the
development, manufacture, sale, lease, or use of which (1) is covered in whole
or in part by, or cannot be performed without infringing, a VALID CLAIM of the
PATENT RIGHTS in the country in which any such product or part thereof is
developed, made, used, sold or imported by LICENSEE or (2) otherwise utilizes
the KNOW-HOW. By way of illustration but not limitation, the Parties
agree that LICENSED PRODUCTS include Cells and any other single cell-derived
cultures of human embryonic progenitor cell lines made utilizing the KNOW-HOW or
methods covered by VALID CLAIMS described in the patent applications and patents
included in the PATENT RIGHTS.
1.8 “LICENSED
SERVICES” means any service, the development, use, performance, or sale of which
is covered in whole or in part by, or cannot be performed without infringing, a
VALID CLAIM of the PATENT RIGHTS in the country in which any such service is so
developed, used, performed, sold, offered for sale, imported or exported by
LICENSEE or otherwise utilizes the KNOW-HOW.
1.9 “NET
SALES” means the invoiced amount on sales by LICENSEE or its Affiliates of
LICENSED PRODUCTS, LICENSED SERVICES or LICENSED PROCESSES less (to the extent
applicable and appropriately documented) (i) sales, tariff and import duties,
use and other taxes directly
imposed
with reference to particular sales, (ii) discounts, rebates, and similar credits
and chargebacks actually allowed and taken (regardless of whether taken or paid
at the time of sale or paid or credited to the buyer at a subsequent date), and
(iii) amounts allowed or credited on returns; provided, any such allowed
deductions shall be listed on the invoice for the applicable LICENSED PRODUCT,
LICENSED PROCESS or LICENSED SERVICE or otherwise documented in the ordinary
course of business, and (b) any Sublicense Revenue.
In the
case of Combination Products, Net Sales means the total invoice amount earned on
sales of Combination Products by LICENSEE or its Affiliates to any third person
or entity, less, to the extent applicable, the deductions set forth above,
multiplied by a proration factor that is determined as follows:
(i) If
all components of the Combination Product were sold separately during the same
or immediately preceding calendar quarter, the proration factor shall be
determined by the formula [A/(A+B)], where A is the average invoice amount
earned on the Licensed Product during such period when sold separately in
finished form, and B is the average invoice amount earned on all other active
components of the Combination Product during such period when sold separately in
finished form; or
(ii) if
all components of the Combination Product were not sold separately during the
same or immediately preceding calendar quarter, the proration factor shall be
determined by the formula [C/(C+D)], where C is the average fully absorbed cost
of the Licensed Product component during the prior quarter and D is the average
fully absorbed cost of all other active components of the Combination Product
during the prior quarter.
1.10 “PATENT
RIGHTS” means the patents and patent applications identified on
Exhibit B
attached
hereto, and any divisional, continuation or continuation-in-part of those
applications, but only to the extent the claims in said applications are
directed to subject matter specifically described in the patents and patent
applications identified on
Exhibit B
, as well as
any patents issued on these patent applications, and any reissues,
reexaminations, extensions and substitutions (or the equivalent) thereof and any
foreign counterparts to those patents and patent applications. The
parties agree that
Exhibit B
may be
revised from time to time after the EFFECTIVE DATE to reflect changes
thereto.
1.11 “SUBLICENSEE”
means a sublicensee of the rights granted LICENSEE under this Agreement, as
further described in Article 2.
1.12 “SUBLICENSE
REVENUE” means consideration that LICENSEE receives for the sublicense of rights
that are granted LICENSEE under
Article 2
, including
without limitation license fees, milestone payments, up front fees, success
fees, and license maintenance fees, but not capital contributions or payments
for costs incurred in research and development.
1.13 “VALID
CLAIM” means (a) a claim of any issued and unexpired United States or foreign
patent included in the PATENT RIGHTS which has not lapsed or become abandoned or
been declared invalid or unenforceable by a court of competent jurisdiction or
an administrative agency from which no appeal can be or has been taken within
the time allowed for such appeal and which has not been disclaimed or admitted
to be invalid or unenforceable through reissue, disclaimer or otherwise, or (b)
to the extent rights are granted by a governmental patent authority thereunder
(i.e., to the extent that
the owner
would be able to enforce a right to a patent royalty thereunder under applicable
patent law), a claim of a pending patent application included in the PATENT
RIGHTS.
For
purposes of this Agreement, except as otherwise expressly provided herein or
unless the context otherwise requires: (a) the use herein of the
plural shall include the single and
vice versa
and the use of the
masculine shall include the feminine; (b) unless otherwise set forth herein, the
use of the term “including” or “includes” means “including [includes] but [is]
not limited to”; and (c) the words “herein,” “hereof,” “hereunder” and other
words of similar import refer to this Agreement as a whole and not to any
particular provision. Additional terms may be defined throughout this
Agreement.
ARTICLE 2 – LICENSE
GRANT
2.1
Grant of
Rights
. ACT hereby grants to LICENSEE, and LICENSEE accepts,
subject to the terms and conditions of this Agreement, a royalty-bearing,
worldwide, exclusive license, with the right to sublicense, to use
the PATENT RIGHTS and KNOW-HOW to (a) research, develop, make, have made, use,
sell, have sold, offer for sale, have offered for sale, import, have imported,
export and have exported LICENSED PRODUCTS, (b) research, develop, use,
practice, sell, have sold, offer for sale, have offered for sale, import, have
imported, export and have exported LICENSED PROCESSES, and (c) develop, use,
perform, sell, have sold, offer for sale, have offered for sale, import, have
imported, export and have exported LICENSED SERVICES.
2.2
Sublicense
Rights
. LICENSEE shall have the right to grant sublicenses of
its rights under Section 2.1 without the consent or approval of ACT; provided
however, that LICENSEE agrees to provide ACT with (a) a draft copy of any
sublicense agreement to ACT at least thirty (30) days before execution to allow
ACT to comment on the terms of the sublicense if ACT chooses to comment; and (b)
a fully executed copy of all sublicense agreements within thirty (30) days after
execution.
2.3
Knowledge
Transfer
. Within ten (10) days of the Effective Date, ACT
shall provide, deliver, and transfer to LICENSEE all information and data
relating to the PATENT RIGHTS and KNOW-HOW as may be reasonably necessary to
allow LICENSEE to exploit the licenses granted hereunder. Such transfer shall be
made free and clear of all liens, security interests, encumbrances, and claims
of any kind by any third party. ACT shall bear all costs of so
delivering the KNOW HOW to LICENSEE. ACT shall not retain any copies
(in any format or media) of the KNOW HOW.
ARTICLE 3 – MATERIAL
TRANSFER
3.1 In
consideration of the payment of the License Fee under Section 5.1, ACT hereby
transfers and assigns to LICENSEE all of ACT’s right, title and interest in and
to the CELLS and CELL LINES, wherever located. Within ten (10) days
after the Effective Date, ACT shall deliver to LICENSEE all CELLS and CELL
LINES. Such transfer and assignment is made free and clear of all
liens, security interests, encumbrances, and claims of any kind by any third
party. ACT shall bear all costs of delivering the CELLS
and CELL LINES to LICENSEE. ACT shall not retain any CELLS or CELL
LINES at its own facilities or at the facilities of any third
party. All CELLS and CELL LINES shall be delivered to LICENSEE
between the hours of 9:00 a.m. and 5:00 p.m. on a weekday (other than a Federal
or California state holiday) at the address shown in Article 11 of this
Agreement, upon twenty
four
hours oral or written notice to LICENSEE. All CELLS and CELL LINES
shall be contained in cryovials and packaging suitable for the purpose of
storage and delivery. ACT will cooperate with LICENSEE in transferring title of
CELLS and CELL LINES held at the American Type Culture Collection to
LICENSEE.
ARTICLE 4 –
COMMERCIALIZATION OBLIGATIONS
4.1 LICENSEE
intends to use, or to cause its Sublicensees to use, commercially reasonable and
diligent efforts to bring one or more LICENSED PRODUCTS, LICENSED PROCESSES and
LICENSED SERVICES to market through an active and diligent program for
exploitation of the PATENT RIGHTS and KNOW-HOW and to continue active, diligent
marketing efforts for one or more LICENSED PRODUCTS, LICENSED PROCESSES and
LICENSED SERVICES throughout the life of this Agreement. LICENSEE
makes no representation, guaranty, or warranty that it or its Sublicensees will
be successful in developing or bringing to market any LICENSED PRODUCT, LICENSED
PROCESS or LICENSED SERVICES.
ARTICLE 5 -
CONSIDERATION
5.1
Initial License
Fee
. In partial consideration of the rights and licenses
granted to LICENSEE by ACT in this Agreement, LICENSEE shall pay to ACT on the
Effective Date a license fee equal to Two Hundred Fifty Thousand
Dollars (U.S.) ($250,000) (the “License Fee”). The License Fee is not
refundable and is not creditable against other payments due to ACT under this
Agreement. The License Fee shall be paid to ACT upon ACT’s delivery
of the KNOW HOW, CELLS, and CELL LINES pursuant to Section 2.3 and Section
3.1.
5.2
Royalties and other
Consideration
.
(a) As
additional consideration of the license granted to LICENSEE from ACT in Article
2 of this Agreement, LICENSEE shall pay to ACT a royalty equal to 8% of (i) the
Net Sales received by LICENSEE and its AFFILIATES for all LICENSED PRODUCTS,
LICENSED PROCESS or LICENSED SERVICE sold, performed, or leased by LICENSEE or
any AFFILIATE, and (ii) all Sublicense Revenue received by LICENSEE and its
AFFILIATES. The obligation of LICENSEE to pay royalties shall
terminate (a) with respect to NET SALES and Sublicense Revenue arising in any
country concurrently with the expiration or termination of the last applicable
VALID CLAIM within the PATENT RIGHTS in such country in which the LICENSED
PRODUCT, LICENSED PROCESS or LICENSED SERVICE is, (as applicable), performed,
sold, leased, or manufactured, or in which the PATENT RIGHTS are licensed, and
(b) in any and all cases when royalty payments to ACT by LICENSEE total One
Million Dollars (U.S.) ($1,000,000.00); provided, however, that such $1,000,000
of royalties shall be reduced to $500,000 if LICENSEE, at LICENSEE’S option,
pays ACT $250,000 in cash within thirty (30) days after the execution of this
Agreement in addition to the License fee payable under Section 5.1 (such that
the License Fee, additional $250,000 payment, and potential future royalties
will total $1,000,000).
(b) No
multiple royalties shall be payable on the basis that any LICENSED PRODUCT,
LICENSED PROCESS or LICENSED SERVICE, its manufacture, use, lease, sale or
performance are or shall be covered by (a) more than one patent or patent
application within the
PATENT
RIGHTS, or (b) any other patent or know how under a license or sublicense from
ACT. In the case of the use of patents or know how licensed or
sublicensed by ACT under other agreements, LICENSEE and ACT’s other licensees or
sublicensees shall have the right to credit against the royalties owing to ACT,
under this Agreement and under such other license or sublicense agreements, any
royalty payments received by ACT with respect to the sale or lease of any
product or performance of any service (regardless of whether LICENSEE or another
licensee or sublicensee of ACT patents or know how pays the royalty), such that
in no event shall the total of royalty payments that are due to ACT in any
royalty period under this Agreement and under such other license or sublicense
agreements exceed the highest applicable royalty rate among this Agreement
and such other license or sublicense agreements. By way of example
only, if a product is produced by LICENSEE or LifeLine Cell Technology, LLC
(“LifeLine”) under that certain License, Product Production and Distribution
Agreement among BioTime, Inc. (“BT”), LICENSEE, and LifeLine (the “LifeLine
Agreement”), and that product uses PATENT RIGHTS under this Agreement and
patents licensed under a license or sublicense agreement between ACT and
LifeLine, (i) only one royalty would be paid to ACT on sales of the product,
(ii) the royalty rate would be the higher of the royalty rate applicable under
this Agreement or under ACT’s license or sublicense agreement with LifeLine, and
(iii) the royalty payment (whether paid by LICENSEE or by LifeLine) will be
credited toward royalties payable under this Agreement and under the ACT license
or sublicense agreement with LifeLine for the sale of the product.
5.3
Payment
Method
. All payments due under this Agreement shall be paid to
ACT in Los Angeles, California, U.S.A., and shall be made in United
States currency without deduction for taxes, assessments, exchanges, collection
or other charges of any kind. Conversion of foreign currency to U.S. dollars
shall be made at the conversion rate reported in The Wall Street Journal on the
last working day of the calendar quarter to which the payment
relates.
5.4
Late
Fee
. LICENSEE shall pay ACT interest on any overdue amounts at
the rate of one percent (1%) per month (twelve percent (12%) per annum), from
the date when such payment should have been made.
ARTICLE 6 - REPORTS AND
RECORDS
6.1 LICENSEE
shall maintain complete and accurate records of LICENSED PRODUCTS, LICENSED
SERVICES and LICENSED PROCESSES that are sold, performed, or, leased by LICENSEE
or its AFFILIATES under this Agreement, and all Sublicense Revenue
received by LICENSEE and its AFFILIATES. LICENSEE shall keep, and
shall cause its AFFILIATES and SUBLICENSEES to keep, full, true and accurate
books of account containing all particulars that may be necessary for the
purpose of showing the amounts payable to ACT hereunder and LICENSEE’s
compliance with the terms and conditions of this Agreement. Said
books of account shall be kept at LICENSEE’s principal place of business or at
such other location as may be agreed upon by the parties. Said books
and the supporting data shall be open upon reasonable advance notice (and no
more frequently than once per calendar year) for three (3) years following the
end of the calendar year to which they pertain, to the inspection of ACT or its
agents for the purpose of verifying LICENSEE’s royalty statement or compliance
in other respects with this Agreement. If any such audit determines
that the reported payments to ACT were less than ninety percent (95%) of the
actual amount due to ACT for the period in question, LICENSEE shall bear the
cost of such audit (without limiting ACT’s other remedies with respect
thereto).
6.2 After
the first commercial sale of a LICENSED PRODUCT, LICENSED SERVICE or LICENSED
PROCESS by LICENSEE any AFFILIATE, or any SUBLICENSEE, or LICENSEE’S
receipt of any Sublicense Revenue, LICENSEE, within forty-five (45) days after
March 31, June 30, September 30 and December 31, of each year, shall deliver to
ACT a true and accurate report of all NET SALES and License Revenue during the
preceding three-month period under this Agreement as shall be pertinent to a
royalty accounting hereunder. Each such report shall include at least
the following:
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(a)
|
number(s)
and type(s) of LICENSED PRODUCTS, LICENSED PROCESSES and LICENSED SERVICES
sold, leased, or performed by LICENSEE and/or its
AFFILIATES;
|
|
(b)
|
total
billings and payments received for LICENSED PRODUCTS, LICENSED PROCESSES
and LICENSED SERVICES performed, sold, or leased by LICENSEE and its
AFFILIATES, and/or Sublicense Revenue received from
its SUBLICENSEES; and
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|
(c)
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deductions
applicable as provided in Section
1.9;
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6.3 With
each such report submitted, LICENSEE shall pay to ACT the royalties and other
payments due and payable under this Agreement. If no royalties or
other payments shall be due, LICENSEE shall so report.
6.4 LICENSEE’s
reporting obligations hereunder shall terminate when LICENSEE’S obligation to
pay royalties to ACT terminates.
ARTICLE 7 - PATENT
RIGHTS
7.1
Responsibility for the
PATENT RIGHTS
. Subject to the terms of this Agreement,
LICENSEE shall be primarily responsible after the Effective Date for the
preparation, filing, prosecution and maintenance of the PATENT RIGHTS listed on
Exhibit
B
. The
costs of such filing, prosecution and maintenance (including without limitation
the payment of all government fees in any given country required to maintain the
PATENT RIGHTS) after the Effective Date shall be borne by
LICENSEE. LICENSEE agrees to use reasonable commercial efforts to
prosecute U.S. patents covering the inventions disclosed in the patent
applications included in the PATENT RIGHTS. LICENSEE shall not be
obligated to reimburse ACT for any costs or expenses incurred by ACT prior to
the Effective Date with respect to the preparation, filing, and prosecution of
any patent applications.
7.2
ACT’s
Participation
. ACT’s patent counsel shall be given a
reasonable opportunity to comment, at ACT’s expense, on all proposed patent
filings and responses to patent office actions or other patent office
communications that may affect the PATENT RIGHTS, and LICENSEE will not
unreasonably refuse to accept any suggestions of ACT’s patent
counsel;
provided
,
however
, that
LICENSEE will have the final decision on the incorporation of any comments of
ACT’s patent counsel.
7.3
Abandonment
. LICENSEE
will not allow any patent or patent application within the PATENT RIGHTS to
become expired or abandoned, or fail to diligently pursue patent protection for
any invention within the PATENT RIGHTS, without giving (a) written notice to ACT
at least thirty (30)
business
days prior to the next due date for any required communication, response to
office action, filing, or payment, failure to meet which would result in
expiration or abandonment, including but not limited to provisional abandonment,
of the patent or patent application, and (b) ACT the right to assume
responsibility for such patent or patent application. If ACT so
elects, (i) LICENSEE will execute such documents and otherwise perform such acts
and make all filings as may be reasonably required to permit ACT or its
designees to prosecute and maintain such patent or application in such
jurisdiction(s) and transact all matters connected therewith (including, as
necessary, appointing ACT’s patent counsel as associate attorneys of record, and
changing address of the patent attorney of record with the appropriate patent
authorities), (ii) ACT will thereafter assume control thereof and all expenses
(arising thereafter) for such prosecution and maintenance by ACT, and (iii)
LICENSEE’s rights and the licenses granted to LICENSEE with respect to all such
patents and patent applications shall automatically terminate upon ACT’s
assumption of control thereof.
7.4
Enforcement of the PATENT
RIGHTS
. The Parties agree to notify each other in writing of
any actual or threatened infringement by a third party of the PATENT RIGHTS or
of any third-party claim of invalidity or unenforceability of the PATENT RIGHTS,
or of any interference or other proceeding affecting the PATENT
RIGHTS. LICENSEE shall have the first right to prosecute and defend
such claims under its sole control and at its sole expense. If
LICENSEE does proceed with such prosecution or defense, ACT shall provide
reasonable assistance to LICENSEE at LICENSEE’s request, provided LICENSEE pays
ACT for the reasonable out-of-pockets costs incurred by ACT in providing such
assistance. Any recovery obtained in an action under this Section 7.4
shall be distributed as follows, in this order: (i) LICENSEE shall be reimbursed
for any expenses incurred in the action; and (ii) LICENSEE shall receive the
remaining recovery, less a reasonable approximation of the royalties that
LICENSEE would have paid to ACT if LICENSEE had received the amount awarded as
ordinary damages as Net Sales of LICENSED PRODUCTS sold by LICENSEE.
7.5
ACT Rights to
Enforce
. In the event that LICENSEE fails to initiate an
infringement action within a reasonable time (but no more than one hundred
eighty (180) days) after LICENSEE becomes aware of the basis for such action
(e.g., the actual or threatened infringement) or fails to answer a declaratory
judgment action or interference proceeding within a reasonable time (but no more
than ninety (90) days) after LICENSEE receives or becomes aware of such
infringement or action or proceeding, ACT shall have the right, after notifying
LICENSEE in writing, to prosecute such infringement or answer such declaratory
judgment action or interference proceeding, under its sole control and at its
sole expense. If ACT does proceed with such prosecution or defense,
LICENSEE shall provide reasonable assistance to ACT at ACT’s request, provided
ACT pays LICENSEE for its reasonable out-of-pockets costs incurred in such
assistance. Any recovery obtained in an action under this Section 7.5
shall be distributed as follows, in this order: (i) ACT shall be reimbursed for
any expenses incurred in the action; (ii) as to ordinary damages, LICENSEE shall
receive an amount equal to lost profits or a reasonable royalty on the
infringing sales (whichever measure the court applied), less a reasonable
approximation of the royalties that LICENSEE would have paid to ACT if LICENSEE
had received such amount as Net Sales of LICENSED PRODUCTS sold by LICENSEE; and
(iii) as to any additional damages, 100% to ACT, unless LICENSEE joins ACT in
the prosecution at its own expense at which point the parties will share equally
in any award.
7.6.
Cooperation
. ACT
and LICENSEE agree to reasonably cooperate in connection with the preparation,
filing, prosecution, and maintenance of the PATENT
RIGHTS. Cooperation includes,
without
limitation, (a) promptly executing all papers and instruments or requiring
employees of ACT or LICENSEE to execute papers and instruments as reasonably
appropriate to enable LICENSEE to file, prosecute, and maintain PATENT RIGHTS in
any country; and (b) promptly informing LICENSEE of matters that may affect
preparation, filing, prosecution, or maintenance of PATENT RIGHTS (such as
becoming aware of an additional inventor who is not listed as an inventor in a
patent application). Additionally, in the event either party
exercises its rights hereunder to proceed with any prosecution of infringement
or defense of the PATENT RIGHTS, such party shall consult with the other party
regarding the course of such proceedings and shall not enter into any
settlement, consent judgment, or other voluntary final disposition of any
infringement action that admits the invalidity or unenforceability of any PATENT
RIGHTS or that would adversely affect the rights of the other party without the
prior written consent of the other party, which consent may not be unreasonably
withheld, conditioned or delayed. Without limiting the generality of
the provisions of this Section 7.6, concurrently with the execution and delivery
of this Agreement ACT shall execute, acknowledge, and deliver to LICENSEE the
documents attached to this Agreement as Exhibit C.
7.7
New Patents
, Inventions, and
Discoveries.
LICENSEE shall have the right to file and
prosecute new patent applications (and to obtain new patents) covering LICENSED
PRODUCTS, LICENSED PROCESSES, AND LICENSED SERVICES, and any other subject
matter, with respect to any KNOW HOW and any other technology, invention, or
discovery made by LICENSEE or any of its Affiliates or Sublicensees using PATENT
RIGHTS and KNOW HOW. ACT shall acquire no rights with respect to such
new patents, inventions, discoveries, or technology not included within the
PATENT RIGHTS and KNOW HOW licensed to LICENSEE by ACT.
ARTICLE 8 –
INDEMNIFICATION,
LIMITATION OF LIABILITY AND
INSURANCE
8.1 LICENSEE
shall at all times during the term of this Agreement and thereafter, indemnify,
defend and hold harmless ACT and its affiliates, successors, assigns, agents,
officers, directors, shareholders and employees (each, an “Indemnified Party”),
at LICENSEE’s sole cost and expense, against all liabilities of any kind
whatsoever, including legal expenses and reasonable attorneys’ fees, arising out
of the death of or injury to any person or persons or out of any damage to
property resulting from the production, manufacture, sale, use, lease,
performance, consumption or advertisement of the LICENSED PRODUCTS, LICENSED
PROCESSES or LICENSED SERVICES or arising from any obligation, act or omission,
or from a breach of any representation or warranty of LICENSEE hereunder,
excepting only claims that result from (a) the willful misconduct or gross
negligence of ACT, (b)
any
material breach by ACT of its representations and warranties under this
Agreement, and (c) claims alleging that the use of any of the PATENT RIGHTS or
KNOW-HOW infringe upon any patent, trade secret, or moral right of any third
party
. The indemnification obligations set forth herein are
subject to the following conditions: (i) the Indemnified Party shall notify
LICENSEE in writing promptly upon learning of any claim or suit for which
indemnification is sought; (ii) LICENSEE shall have control of the defense or
settlement,
provided
that
the Indemnified Party shall have the right (but not the obligation)
to participate in such defense or settlement with counsel at its selection and
at its sole expense; and (iii) the Indemnified Party shall reasonably cooperate
with the defense, at LICENSEE’s expense.
8.2 EXCEPT
AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, ACT, ITS DIRECTORS,
OFFICERS, AGENTS, SHAREHOLDERS, EMPLOYEES, AND AFFILIATES MAKE NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE
ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS
AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY ACT
THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT
INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL ACT,
ITS DIRECTORS, OFFICERS, AGENTS, SHAREHOLDERS, EMPLOYEES AND AFFILIATES BE
LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC
DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER ACT SHALL
BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE
POSSIBILITY OF SUCH DAMAGES.
8.3 LICENSEE
agrees to maintain insurance or self-insurance that is reasonably adequate to
fulfill any potential obligation to the indemnified parties. LICENSEE
shall continue to maintain such insurance or self-insurance during the term of
this Agreement and after the expiration or termination of this Agreement for a
period of five (5) years.
ARTICLE 9 –
TERMINATION
9.1 This
Agreement shall be effective on the Effective Date and shall extend twenty (20)
years or until the expiration of the last to expire of the PATENT RIGHTS,
whichever is later, unless sooner terminated as provided in this Article
9.
9.2 ACT
may terminate this Agreement and the rights, privileges and license granted
hereunder by written notice upon a breach or default of this Agreement by
LICENSEE, as follows:
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(i)
|
non-payment
of any amounts due which is not cured within thirty (30) days of receipt
of written notice of such non-payment wherein said notice is delivered by
registered mail; or
|
|
(ii)
|
breach
of any obligation which is not cured within thirty (30) days of a written
request to remedy such breach wherein said request is delivered by
registered mail, or if the breach cannot be cured within said thirty (30)
day period, failure of LICENSEE within said thirty (30) day period to
proceed with reasonable promptness thereafter to cure the
breach.
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Such
termination shall become automatically effective unless LICENSEE shall have
cured any such material breach or default prior to the expiration of the
applicable cure period.
9.3 LICENSEE
shall have the right to terminate this Agreement at any time on three (3)
months’ prior notice to ACT, and upon payment of all amounts due ACT through
the
effective
date of the termination.
9.4 Upon
termination of this Agreement for any reason, nothing herein shall be construed
to release either party from any obligation that matured prior to the effective
date of such termination; and Sections 6.1,Article 8, Article 10, Article 12,
Section 13.4, Section 13.5, and Section 13.6, and any other Sections
or provisions which by their nature are intended to survive termination, shall
survive any such termination.
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ARTICLE 10 -
CONFIDENTIALITY
|
10.1 During
the course of this Agreement, ACT and LICENSEE may provide each other with
CONFIDENTIAL INFORMATION. CONFIDENTIAL INFORMATION may be disclosed
in oral, visual or written form, and includes such information that is
designated in writing as such by the discloser at the time of disclosure, orally
disclosed information that is designated in writing as confidential within 30
days after such oral disclosure, or information which, under all of the given
circumstances ought reasonably be treated as CONFIDENTIAL INFORMATION of the
disclosing party. ACT and LICENSEE each intend to maintain the confidential or
trade secret status of their CONFIDENTIAL INFORMATION. Each shall
exercise reasonable care to protect the CONFIDENTIAL INFORMATION of the other
from disclosure to third parties; no such disclosure shall be made without the
other’s written permission. Upon termination or expiration of this
Agreement, ACT and/or LICENSEE shall comply with the other’s written request to
return all CONFIDENTIAL INFORMATION that is in written or tangible
form. Except as expressly provided herein, neither ACT nor LICENSEE
is granted any license to use the other’s CONFIDENTIAL
INFORMATION. The obligations of ACT and LICENSEE under this Article
10 shall survive any expiration or termination of this
Agreement. Notwithstanding the preceding provisions of this Section
10.1, until such time as this Agreement is terminated: (a) KNOW HOW
and the content of any patent application relating to or included in PATENT
RIGHTS shall be deemed to be the LICENSEE’s CONFIDENTIAL INFORMATION rather than
ACT’s CONFIDENTIAL INFORMATION; (b) LICENSEE shall have the right to disclose
KNOW HOW and the content of patent applications related to or included in PATENT
RIGHTS to third parties without restriction under this Agreement; and (c)
LICENSEE shall not have any obligation to ACT to treat KNOW HOW or the content
of any patent application related to or included in PATENT RIGHTS as ACT’s
CONFIDENTIAL INFORMATION.
10.2 The
parties agree that the specific terms (but not the overall existence) of this
Agreement shall be considered CONFIDENTIAL INFORMATION; provided, however, that
the parties may disclose the terms of this Agreement to investors or potential
investors, potential business partners, potential Sublicensees and assignees,
potential co-developers, manufacturers, marketers, or distributors of any
LICENSED PRODUCT, LICENSED PROCESS, or LICENSED SERVICE, and in any prospectus,
offering, memorandum, or other document or filing required by applicable
securities laws or other applicable law or regulation. The parties
may also disclose CONFIDENTIAL INFORMATION that is required to be disclosed to
comply with applicable law or court order, provided that the recipient gives
reasonable prior written notice of the required disclosure to the discloser and
reasonably cooperates with the discloser’s efforts to prevent such
disclosure.
ARTICLE 11 - PAYMENTS,
NOTICES, AND OTHER COMMUNICATIONS
Any payment, notice or other
communication required to be given to any party will be deemed to have been
properly given and to be effective (a) on the date of delivery if delivered by
hand, recognized national next business day delivery service, confirmed
facsimile transmission, or confirmed electronic mail, or five (5) days after
mailing by registered or certified mail, postage prepaid, return receipt
requested, to the respective addresses given below, or to another address as it
shall designate by written notice given to the other party in the manner
provided in this Section.
In the case of
ACT: Advanced
Cell Technology, Inc.
11100 Santa Monica Blvd, Suite
850
Los Angeles, CA 90025
Attention: William M.
Caldwell, IV
With a copy
to: Pierce
Atwood LLP
One Monument Square
Portland, ME 04101
Attention: William L.
Worden, Esq.
In the case of
LICENSEE Embryome
Sciences, Inc.
1301 Harbor Bay Parkway, Suite 100
Alameda, California 94502
Attention: Michael D. West
With a
copy
to:
Richard S. Soroko, Esq.
Lippenberger, Thompson, Welch, Soroko & Gilbert LLP
201 Tamal Vista Blvd.
Corte Madera, California 94925
ARTICLE 12 - REPRESENTATIONS
AND WARRANTIES
12.1 LICENSEE
represents and warrants that it has full corporate power and authority to enter
into this Agreement, that this Agreement constitutes the binding legal
obligation of LICENSEE, enforceable in accordance with its terms, and that the
execution and performance of this Agreement by LICENSEE will not violate,
contravene or conflict with any other agreement to which LICENSEE is a party or
by which it is bound or with any law, rule or regulation applicable to LICENSEE,
and that any permits, consents or approvals necessary or appropriate for
LICENSEE to enter into this Agreement have been obtained.
12.2 LICENSEE
is an entity duly incorporated or otherwise organized, validly existing and in
good standing under the laws of the jurisdiction of its incorporation or
organization, with the requisite power and authority to own and use its
properties and assets and to carry on its business as currently
conducted.
12.3 ACT
represents and warrants that (a) it owns the PATENT RIGHTS and KNOW HOW, (b) it
has the full legal right and power to grant the licenses granted hereunder, (c)
that this Agreement constitutes the binding legal obligation of ACT, enforceable
in accordance with its terms, (c) the execution, delivery, and performance of
this Agreement by ACT will not violate, contravene or
conflict
with any other agreement to which ACT is a party or by which it is bound or with
any law, rule or regulation applicable to ACT, and (d) any permits, consents or
approvals necessary or appropriate for ACT to enter into this Agreement have
been obtained.
12.4 ACT
represents and warrants that, to the best of its knowledge, the use of the
PATENT RIGHTS and KNOW HOW by LICENSEE or any Sublicensee for any purposes
contemplated or permitted by this Agreement, will not infringe in any way any
claim under any patent held by any third party.
12.5 ACT
represents and warrant that the use of the PATENT RIGHTS and KNOW-HOW by
LICENSEE or any Sublicensee for any purposes contemplated or permitted by this
Agreement, will not infringe in any way any claim under any patent held by ACT
or under any patent that may issue from any ACT patent application now pending,
or under any patent that ACT may in the future obtain, or any other intellectual
property rights of ACT.
12.6 ACT
further represents, warrants and agrees, that it shall not make any claim or
demand, or commence any lawsuit or other proceeding, alleging that use of the
PATENT RIGHTS, KNOW-HOW, CELLS, and CELL LINES by LICENSEE or any Sublicensee
for any purpose contemplated or permitted by this Agreement infringes in any way
any claim under any patent held by ACT or under any patent that may issue from
any ACT patent application now pending, or under any patent that ACT may in the
future obtain, or any other intellectual property rights of ACT. The
provisions of this Section 12.5 shall pertain as well to all subsidiaries of ACT
and all patents and patent applications of ACT subsidiaries. ACT and
its subsidiaries shall cause the provisions of this Section 12.6, as they
pertain to refraining from asserting claims and demands or commencing lawsuits
and proceedings, to be including in all licenses and assignments of ACT’s
patents and patent applications.
12.7 ACT
represents and warrants that all of the patent applications of ACT and its
subsidiaries pertaining to the processes or technology needed (alone or together
with the KNOW-HOW) to make or develop CELLS and CELL LINES are identified on
Exhibit
B.
12.8 This
Article 12 shall survive expiration or termination of this
Agreement.
ARTICLE 13 – ACT
OPTIONS
13.1
ACT shall have the option to acquire
from LICENCEE an exclusive, royalty free, world-wide license to use PATENT
RIGHTS and KNOW-HOW to research, develop, make, have made, use, sell, have sold,
offer for sale, have offered for sale, import, have imported, export and have
exported LICENSED PRODUCTS consisting of
retinal pigment epithelial
cells, hemangioblasts, and myocardial cells
for human therapeutic use, and a
non-exclusive, royalty free, world-wide license to use PATENT RIGHTS and
KNOW-HOW to research, develop, make, have made, use, sell, have sold, offer for
sale, have offered for sale, import, have imported, export and have exported
LICENSED PRODUCTS consisting of
hepatocytes for human
therapeutic use.
13.2 The
options granted to ACT under this Section 13.1 are exercisable by ACT
individually, with respect to each cell type, so that ACT may elect to exercise
its option with respect to all or with respect to one or more of such cell
types, but each such exercise shall require payment of the
Exercise
Price with respect to each such cell type. The Exercise Price shall
be $5,000 for each cell type. ACT may exercise its option with respect to a
particular cell type by delivering to LICENSEE written notice of such exercise,
specifying the cell type(s) and accompanied by payment of the Exercise Price for
each such cell type as to which the option is being exercised.
13.3 The
option granted to ACT under this Article 13 with respect to a particular cell
type may be exercised by ACT during a 12 month period commencing on the date on
which LICENSEE gives ACT notice of the first VALID CLAIM under a patent is
issued in any country covering LICENSED PRODUCTS of any kind that would include
that cell type, and ending on the day immediately preceding the first
anniversary of the date on which such notice was given by
LICENSEE. ACT may not exercise the option after such 12 month period
expires. Notwithstanding any other provision of this Article 13, ACT
may not exercise its option if ACT is in breach or default of any of its
agreements, covenants, representations, or warranties under this
Agreement.
13.4 If
ACT exercises an option and acquires a license under this Article 13, ACT shall
at all times during the term of this Agreement and thereafter, indemnify, defend
and hold harmless LICENSEE and LICENSEE’s Affiliates, successors, assigns,
agents, officers, directors, shareholders and employees (each, a “LICENSEE
Indemnified Party”), at ACT’s sole cost and expense, against all liabilities of
any kind whatsoever, including legal expenses and reasonable attorneys’ fees,
arising out of the death of or injury to any person or persons or out of any
damage to property resulting from the production, manufacture, sale, use, lease,
performance, consumption or advertisement of the LICENSED PRODUCTS under such
license, The indemnification obligations set forth herein are subject
to the following conditions: (i) the LICENSEE Indemnified Party shall notify ACT
in writing promptly upon learning of any claim or suit for which indemnification
is sought; (ii) ACT shall have control of the defense or settlement,
provided that
the
LICENSEE Indemnified Party shall have the right (but not the obligation) to
participate in such defense or settlement with counsel at its selection and at
its sole expense; and (iii) the LICENSEE Indemnified Party shall reasonably
cooperate with the defense, at ACT’s expense.
13.5 EXCEPT
AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSEE, ITS DIRECTORS,
OFFICERS, AGENTS, SHAREHOLDERS, EMPLOYEES, AND AFFILIATES MAKE NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE
ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS
AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY ACT
THAT THE PRACTICE BY ACT OF ANY LICENSE GRANTED HEREUNDER SHALL NOT INFRINGE THE
PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL LICENSEE, ITS
DIRECTORS, OFFICERS, AGENTS, SHAREHOLDERS, EMPLOYEES AND AFFILIATES BE LIABLE
FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE
OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER LICENSEE SHALL BE
ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE
POSSIBILITY OF SUCH DAMAGES.
13.6 ACT
agrees to maintain insurance or self-insurance that is reasonably adequate to
fulfill
any
potential obligation to the LICENSEE Indemnified Parties. ACT shall
continue to maintain such insurance or self-insurance during the term of each of
its licenses and after the expiration or termination of the licenses for a
period of five (5) years.
ARTICLE 14 - MISCELLANEOUS
PROVISIONS
14.1 Nothing
herein shall be deemed to constitute either party as the agent or representative
of the other party.
14.2 To
the extent commercially feasible, and consistent with prevailing business
practices, all products manufactured or sold under this Agreement will be marked
with the number of each issued patent that applies to such product.
14.3 This
Agreement shall be construed, governed, interpreted and applied in accordance
with the laws of California, without regard to principles of conflicts of law
thereof, except that questions affecting the construction and effect of any
patent shall be determined by the law of the country in which the patent was
granted.
14.4 The
parties hereto acknowledge that this Agreement (including the Exhibits hereto)
sets forth the entire Agreement and understanding of the parties hereto as to
the subject matter hereof, and shall not be subject to any change or
modification except by the execution of a written instrument subscribed to by
the parties hereto.
14.5 The
provisions of this Agreement are severable, and in the event that any provisions
of this Agreement shall be determined to be invalid or unenforceable under any
controlling body of the law, such invalidity or unenforceability shall not in
any way affect the validity or enforceability of the remaining provisions
hereof.
14.6 The
failure of either party to assert a right hereunder or to insist upon compliance
with any term or condition of this Agreement shall not constitute a waiver of
that right or excuse a similar subsequent failure to perform any such term or
condition by the other party.
[The next
page is the signature page]
IN WITNESS WHEREOF, the parties have
duly executed this Agreement as of the Effective Date set forth
above.
ADVANCED
CELL TECHNOLOGY, INC.
By: /s/
William M. Caldwell,
IV
Printed
Name: William M. Caldwell, IV
Title: Chairman
& CEO
By:
Printed
Name:
Title: Secretary
EMBRYOME
SCIENCES, INC.
By: /s/
Michael D.
West
Printed
Name: Michael D. West
Title:
Chief Executive Officer
By: /s/
Judith
Segall
Printed
Name: Judith Segall
Title:
Secretary
EXHIBIT
A
ACTC
No.
|
Cell
Line
|
NA
|
Parental
hES Cells
|
A
|
Parental
hES Cells
|
50
|
B-26
|
51
|
B-2
|
52
|
B-29
|
53
|
B-7
|
54
|
B-17
|
55
|
B-3
|
56
|
B-6
|
57
|
B-25
|
58
|
B-11
|
59
|
B-16
|
60
|
B-28
|
61
|
B-30
|
62
|
2-2
(Rep1)
|
62
|
2-2
(Rep2)
|
63
|
2-1
|
64
|
6-1
|
65
|
B-12
|
66
|
B-4
|
67
|
B-14
|
68
|
5-4
|
69
|
4-2
|
70
|
2-3
|
71
|
B-15
|
72
|
CM50-4
|
ACTC
No.
|
Cell Line
|
73
|
CM0-3
|
74
|
CM0-5
|
75
|
CM50-5
|
76
|
CM50-2
|
77
|
CM0-2
|
78
|
CM30-2
|
79
|
CM20-4
|
80
|
E26
|
81
|
E71
|
82
|
4-D20-9
|
83
|
4-SKEL-19
|
84
|
4-D20-8
|
85
|
E34
|
86
|
E51
|
87
|
C4.4
|
88
|
E3
|
89
|
E73
|
90
|
E93
|
91
|
E57
|
92
|
C4
ELSR #14
|
93
|
E76
|
94
|
E17
|
95
|
E40
|
96
|
E8
|
97
|
E67
|
98
|
E15
|
99
|
E45
|
100
|
E72
|
101
|
E69
|
ACTC No.
|
Cell
Line
|
102
|
E75
|
103
|
M10
|
104
|
M13
|
105
|
E19
|
106
|
T44
|
107
|
E61
|
108
|
C4
ELSR #18
|
109
|
RA-SKEL-8
|
110
|
4-SKEL-8
|
111
|
RA-PEND-15
|
112
|
E108
|
113
|
E35
|
114
|
E33
|
115
|
E80
|
116
|
E84
|
117
|
E109
|
118
|
C4
ELS5 #6
|
119
|
J8
|
120
|
T43
|
121
|
E10
|
122
|
RA-PEND-6
|
123
|
RA-PEND-10
|
124
|
RA-SKEL-3
|
125
|
RA-SKEL-21
|
126
|
4-SKEL-4
|
127
|
4-SKEL-20
|
128
|
RA-PEND-4
|
129
|
RA-PEND-18
|
130
|
C4
ELS5 #1
|
ACTC
No.
|
Cell Line
|
131
|
C4
ELSR #12
|
132
|
E163
|
133
|
C4
Mesen. #3
|
134
|
G6
|
135
|
C4
ELS5 #5
|
136
|
J16
|
137
|
SK46
|
138
|
SK47
|
139
|
EN2
|
140
|
EN26
|
141
|
EN31
|
142
|
SM2
|
143
|
SM4
|
144
|
EN4
|
145
|
EN5
|
146
|
SK52
|
147
|
SK43
|
148
|
SK30
|
149
|
SM42
|
150
|
SM28
|
151
|
SM49
|
152
|
C4
ELSR #10
|
153
|
RA-SKEL-11
|
154
|
RA-SMO-12
|
155
|
RA-D20-16
|
156
|
SM22
|
157
|
SK5
|
158
|
SK18
|
159
|
SK50
|
ACTC No.
|
Cell
Line
|
160
|
SK54
|
161
|
J4
|
162
|
SK17
|
163
|
SK26
|
164
|
SK31
|
165
|
SK32
|
166
|
SM25
|
167
|
C4
ELSR #2 (Bio 1)
|
167
|
C4
ELSR #2 (Bio 2)
|
167
|
C4
ELSR #2 (Bio 3)
|
168
|
SK3
|
169
|
SK53
|
170
|
E44
|
171
|
E65
|
172
|
J13
|
173
|
EN1
|
174
|
EN13
|
175
|
EN42
|
176
|
EN47
|
177
|
SM27
|
178
|
E50
|
179
|
E30
(Bio1)
|
179
|
E30
(Bio2)
|
180
|
E122
|
181
|
SK61
|
182
|
SM17
|
183
|
SM33
|
184
|
EN7
|
185
|
EN55
|
ACTC No.
|
Cell
Line
|
186
|
T7
|
187
|
EN22
|
188
|
SK58
|
189
|
MW2
|
190
|
SK8
|
191
|
SK20
|
192
|
SK60
|
193
|
MW6
|
194
|
Z11
(Rep 1)
|
194
|
Z11
(Rep 2)
|
195
|
Z6
|
196
|
W10
|
197
|
W11
|
198
|
T36
|
199
|
EN27
|
200
|
Z7
|
201
|
SM44
|
202
|
EN38
|
203
|
SK1
|
204
|
SK44
|
205
|
SK57
|
206
|
J2
|
207
|
E68
|
208
|
E169
|
209
|
E164
|
210
|
T42
|
211
|
T14
|
212
|
RA-D20-6
|
213
|
Z8
|
ACTC
No.
|
Cell
Line
|
214
|
SK40
|
215
|
EN11
|
216
|
EN18
|
217
|
EN23
|
218
|
SK14
|
219
|
SK10
|
220
|
EN51
|
221
|
EN16
|
222
|
E53
|
223
|
E111
|
224
|
SK49
|
225
|
SM8
|
226
|
RA-D20-5
|
227
|
RA-D20-24
|
228
|
W7
|
229
|
4-D20-14
|
230
|
RA-D20-19
|
231
|
T20
|
232
|
RA-SMO-19
|
233
|
M11
|
234
|
EN9
|
235
|
Q7
|
236
|
U31
|
237
|
EN19
|
238
|
C4
ELS5 #8
|
239
|
Q8
|
240
|
SK25
|
241
|
EN20
|
242
|
MW1
|
ACTC
No.
|
Cell
Line
|
243
|
C4
ELSR #13
|
244
|
Z3
|
245
|
W8
(Rep 1)
|
245
|
W8
(Rep 2)
|
246
|
SK28
|
247
|
E120
|
248
|
SM51
|
249
|
EN8
|
250
|
SK11
|
251
|
EN43
|
252
|
4-D20-3
|
253
|
EN44
|
254
|
EN50
|
255
|
Z2
|
256
|
SM30
|
257
|
EN53
|
258
|
SK27
|
259
|
U18
|
260
|
SM35
|
261
|
EN25
|
262
|
C4
ELSR 6
|
263
|
Z1
|
264
|
F15
|
265
|
RA-SKEL-9
|
266
|
E85
|
267
|
W4
|
268
|
MEL-2
|
269
|
LS2
|
270
|
7-SKEL-4
|
ACTC
No.
|
Cell
Line
|
271
|
7-SKEL-7
|
272
|
7-PEND-9
|
273
|
7-PEND-16
|
274
|
7-SKEL-6
|
275
|
LS3
|
276
|
7-SMOO-19
|
277
|
7-SMOO-29
|
278
|
7-SMOO-32
|
279
|
7-SMOO-33
|
280
|
7-SMOO-4
|
281
|
7-SMOO-9
|
282
|
7-SMOO-17
|
283
|
7-PEND-24
|
284
|
7-SKEL-32
|
285
|
7-SMOO-13
|
286
|
7-SMOO-25
|
287
|
7-SMOO-12
|
288
|
7-PEND-30
|
289
|
7-SKEL-25
|
290
|
7-SMOO-6
|
291
|
7-SMOO-26
|
292
|
7-SMOO-22
|
293
|
7-SMOO-8
|
294
|
7-SKEL-14
|
295
|
7-SKEL-11
|
296
|
7-SKEL-2
|
297
|
7-SKEL-22
|
298
|
7-SMOO-7
|
299
|
7-PEND-12
|
ACTC
No.
|
Cell Line
|
300
|
7-SMOO-27
|
301
|
7-PEND-13
|
302
|
7-PEND-11
|
303
|
7-PEND-15
|
304
|
7-PEND-32
|
305
|
7-PEND-26
|
306
|
7-SKEL-24
|
307
|
7-PEND-10
|
308
|
7-PEND-23
|
309
|
10-RPE-9
|
310
|
10-RPE-8
|
311
|
RA-PEND-19
|
NA
|
X4.1
|
NA
|
X4.3
|
NA
|
B-10
|
NA
|
B-1
|
NA
|
X4
|
NA
|
X5
|
NA
|
B-20
|
NA
|
B-22
|
NA
|
X6
|
NA
|
CM10.1
|
NA
|
X2
|
NA
|
B-27
|
NA
|
B-9
|
NA
|
X4.4
|
NA
|
E31
|
NA
|
CM10-4
|
NA
|
CM30-5
|
ACTC
No.
|
Cell
Line
|
NA
|
EN28
|
NA
|
Q4
|
NA
|
Q6
|
NA
|
RA-PEND-17
(Bio 1)
|
NA
|
RA-PEND-17
(Bio 2)
|
NA
|
RA-SKEL-18
(Rep 1)
|
NA
|
RA-SKEL-18
(Rep 2)
|
NA
|
RA-SKEL-6
|
NA
|
SM19
|
NA
|
SM29
|
NA
|
SM40
|
NA
|
T23
|
NA
|
T4
|
NA
|
U30
|
NA
|
W2
|
NA
|
W3
|
NA
|
E11
|
NA
|
SK15
|
NA
|
E55
|
NA
|
E132
|
NA
|
RA-SMO-10
|
NA
|
RA-SMO-14
|
NA
|
W9
|
NA
|
MW4
|
NA
|
SK16
|
.
.
.
[Attach
complete list of ACTCellerate cell lines (200+ lines)]
EXHIBIT
B
PATENT
RIGHTS
103080-069-WO1 (PCT/US06/13519,
filed on 4-11-06): NOVEL USES OF CELLS WITH PRENATAL PATTERNS OF GENE
EXPRESSION, published as WO2007/058671
103080-071-P61 (USSN
60/791,400, filed on Apr. 11, 2006): METHODS TO ACCELERATE THE ISOLATION OF
NOVEL CELL STRAINS FROM PLURIPOTENT ST
103080-071-P66 (USSN
60/850,294, filed on Oct. 6, 2006), METHODS TO ACCELERATE THE ISOLATION OF NOVEL
CELL STRAINS FROM PLURIPOTENT STEM CELLS
103080-071-P01
(USSN 11/604,047, filed on Nov. 21, 2006), METHODS TO ACCELERATE THE ISOLATION
OF NOVEL CELL STRAINS FROM PLURIPOTENT STE...
PCT is
103080-071-WO2 (PCT/US2006/45352, filed on Nov. 21, 2006), published as WO
2007/062198.
Subsequent
provisional filings of CIPs of the above through February 2007.
EXHIBIT
C
POWERS OF ATTORNEY AND OTHER
AUTHTORIZATIONS RELATING TO PATENT RIGHTS