​
As filed with the Securities and Exchange Commission on December 1, 2020.
Registration No. 333-250954​
​
​
UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
​
AMENDMENT NO. 1
TO
FORM S-1
REGISTRATION STATEMENT
UNDER
THE SECURITIES ACT OF 1933
​
908 Devices Inc.
(Exact name of registrant as specified in its charter)
​
​
Delaware
(State or other jurisdiction of
incorporation or organization)
​ ​
3829
(Primary Standard Industrial
Classification Code Number)
​ ​
45-4524096
(I.R.S. Employer
Identification Number)
​
​
645 Summer Street
Boston, MA 02210
(857) 254-1500
(Address, including zip code, and telephone number, including area code, of registrant’s principal executive offices)
​
Kevin J. Knopp
Chief Executive Officer
645 Summer Street
Boston, MA 02210
(857) 254-1500
(Name, address, including zip code, and telephone number, including area code, of agent for service)
​
Copies of all communications, including communications sent to agent for service, should be sent to:
​
Mark J. Macenka
Michael J. Minahan
Goodwin Procter LLP
100 Northern Ave.
Boston, MA 02210
(617) 570-1000
​ ​
Eric Blanchard
Darren DeStefano
Brent Siler
Cooley LLP
55 Hudson Yards
New York, NY 10001
(212) 479-6000
​
​
Approximate date of commencement of proposed sale to the public: As soon as practicable after this registration statement becomes effective.
If any of the securities being registered on this Form are to be offered on a delayed or continuous basis pursuant to Rule 415 under the Securities Act of 1933, as amended, check the following box.   ☐
If this Form is filed to register additional securities for an offering pursuant to Rule 462(b) under the Securities Act, please check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering.   ☐
If this Form is a post-effective amendment filed pursuant to Rule 462(c) under the Securities Act, check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering.   ☐
If this Form is a post-effective amendment filed pursuant to Rule 462(d) under the Securities Act, check the following box and list the Securities Act registration statement number of the earlier effective registration statement for the same offering.   ☐
Indicate by check mark whether the registrant is a large accelerated filer, an accelerated filer, a non-accelerated filer, a smaller reporting company or an emerging growth company. See the definitions of  “large accelerated filer,” “accelerated filer,” “smaller reporting company” and “emerging growth company” in Rule 12b-2 of the Exchange Act.
​
Large Accelerated Filer
☐
​
​ ​
Accelerated Filer
☐
​
​
​
Non-Accelerated Filer
☒
​
​ ​
Smaller Reporting Company
☒
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​
​ ​ ​ ​
Emerging Growth Company
☒
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If an emerging growth company, indicate by check mark if the registrant has elected not to use the extended transition period for complying with any new or revised financial accounting standards provided to Section 7(a)(2)(B) of the Securities Act.   ☐
​
CALCULATION OF REGISTRATION FEE
​ ​
Title of each Class of Securities
to be Registered
​ ​ ​
Proposed
Maximum Aggregate
Offering Price(1)(2)
​ ​ ​
Amount of
Registration Fee(3)
​
Common Stock, par value $0.001 per share
​ ​ ​ ​ $ 75,000,000 ​ ​ ​ ​ ​ $ 8,183 ​ ​
​
(1)
Estimated solely for the purpose of calculating the registration fee pursuant to Rule 457(o) under the Securities Act of 1933, as amended.
​
(2)
Includes the offering price of shares that the underwriters may purchase pursuant to an option to purchase additional shares.
​
(3)
Previously paid.
​
​
The registrant hereby amends this registration statement on such date or dates as may be necessary to delay its effective date until the registrant shall file a further amendment that specifically states that this registration statement shall thereafter become effective in accordance with Section 8(a) of the Securities Act of 1933, as amended, or until this registration statement shall become effective on such date as the Commission, acting pursuant to said Section 8(a), may determine.
​
​
​
 
EXPLANATORY NOTE
908 Devices Inc. is filing this Amendment No. 1 to its Registration Statement on Form S-1 (File No. 333-250954), which was initially filed with the Securities and Exchange Commission on November 25, 2020 (the “Registration Statement”), solely for the purpose of filing Exhibit 3.1, 3.2, 3.4, 10.1, 10.6, 10.7 and 10.8 to the Registration Statement and making corresponding updates to Item 16 and the Exhibit Index. Accordingly, this Amendment No. 1 consists only of the facing page, this explanatory note, Part II of the Registration Statement, the signature page to the Registration Statement, and the exhibits filed herewith. This Amendment No. 1 does not contain a copy of the prospectus that was included in the Registration Statement and is not intended to amend or delete any part of the prospectus.
 
​
 
PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
Item 13.   Other Expenses of Issuance and Distribution.
The following table sets forth the fees and expenses, other than underwriting discounts and commissions, payable in connection with the registration of the common stock hereunder. All amounts are estimates except the SEC registration fee, the FINRA filing fee and the Nasdaq Global Market listing fee.
​ ​ ​
Amount
to be Paid
​
SEC registration fee
​ ​ ​ $ 8,183 ​ ​
FINRA filing fee
​ ​ ​ ​ ​ * ​ ​
Nasdaq Global Market listing fee
​ ​ ​ ​ ​ * ​ ​
Printing and mailing
​ ​ ​ ​ ​ * ​ ​
Legal fees and expenses
​ ​ ​ ​ ​ * ​ ​
Accounting fees and expenses
​ ​ ​ ​ ​ * ​ ​
Transfer agent and registrar fees and expenses
​ ​ ​ ​ ​ * ​ ​
Miscellaneous
​ ​ ​ ​ ​ * ​ ​
Total
​ ​ ​ $ * ​ ​
​
*
To be completed by amendment.
​
Item 14.   Indemnification of Directors and Officers.
Section 145 of the Delaware General Corporation Law or the DGCL, authorizes a corporation to indemnify its directors and officers against liabilities arising out of actions, suits and proceedings to which they are made or threatened to be made a party by reason of the fact that they have served or are currently serving as a director or officer to a corporation. The indemnity may cover expenses (including attorneys’ fees) judgments, fines and amounts paid in settlement actually and reasonably incurred by the director or officer in connection with any such action, suit or proceeding. Section 145 permits corporations to pay expenses (including attorneys’ fees) incurred by directors and officers in advance of the final disposition of such action, suit or proceeding. In addition, Section 145 provides that a corporation has the power to purchase and maintain insurance on behalf of its directors and officers against any liability asserted against them and incurred by them in their capacity as a director or officer, or arising out of their status as such, whether or not the corporation would have the power to indemnify the director or officer against such liability under Section 145.
We have adopted provisions in our sixth amended and restated certificate of incorporation to be in effect upon the completion of this offering and amended and restated by-laws to be in effect upon the effectiveness of this registration statement that limit or eliminate the personal liability of our directors to the fullest extent permitted by the DGCL, as it now exists or may in the future be amended. Consequently, a director will not be personally liable to us or our stockholders for monetary damages or breach of fiduciary duty as a director, except for liability for:
•
any breach of the director’s duty of loyalty to us or our stockholders; any act or omission not in good faith or that involves intentional misconduct or a knowing violation of law; any unlawful payments related to dividends or unlawful stock purchases, redemptions or other distributions; or any transaction from which the director derived an improper personal benefit.
​
These limitations of liability do not alter director liability under the federal securities laws and do not affect the availability of equitable remedies such as an injunction or rescission.
 
II-1
​
 
In addition, our by-laws provide that:
•
we will indemnify our directors, officers and, in the discretion of our board of directors, certain employees to the fullest extent permitted by the DGCL, as it now exists or may in the future be amended; and
​
•
we will advance reasonable expenses, including attorneys’ fees, to our directors and, in the discretion of our board of directors, to our officers and certain employees, in connection with legal proceedings relating to their service for or on behalf of us, subject to limited exceptions.
​
We have entered into indemnification agreements with each of our directors and intend to enter into such agreements with certain of our executive officers. These agreements provide that we will indemnify each of our directors, certain of our executive officers and, at times, their affiliates to the fullest extent permitted by Delaware law. We will advance expenses, including attorneys’ fees (but excluding judgments, fines and settlement amounts), to each indemnified director, executive officer or affiliate in connection with any proceeding in which indemnification is available and we will indemnify our directors and officers for any action or proceeding arising out of that person’s services as a director or officer brought on behalf of us or in furtherance of our rights. Additionally, certain of our directors or officers may have certain rights to indemnification, advancement of expenses or insurance provided by their affiliates or other third parties, which indemnification relates to and might apply to the same proceedings arising out of such director’s or officer’s services as a director referenced herein. Nonetheless, we have agreed in the indemnification agreements that our obligations to those same directors or officers are primary and any obligation of such affiliates or other third parties to advance expenses or to provide indemnification for the expenses or liabilities incurred by those directors are secondary.
We also maintain general liability insurance which covers certain liabilities of our directors and officers arising out of claims based on acts or omissions in their capacities as directors or officers, including liabilities under the Securities Act of 1933, as amended, or the Securities Act.
The underwriting agreement filed as Exhibit 1.1 to this registration statement provides for indemnification of us and our directors and officers by the underwriters against certain liabilities under the Securities Act and the Securities Exchange Act of 1934.
Item 15.   Recent Sales of Unregistered Securities.
The following list sets forth information regarding all unregistered securities sold by us since January 1, 2017. No underwriters were involved in the sales and the certificates representing the securities issued and sold contain legends restricting transfer of the securities without registration under the Securities Act or an applicable exemption from registration.
(a)
In March 2017 and September 2018, we issued and sold an aggregate of 4,259,011 shares of our Series D redeemable convertible preferred stock at a purchase price of  $5.6351 per share for aggregate proceeds of  $23,999,952 to a total of eleven (11) accredited investors.
​
(b)
In April 2019, we issued and sold an aggregate of 2,782,194 shares of our Series E redeemable convertible preferred stock at a purchase price of  $6.29 per share for aggregate proceeds of approximately $17,500,000 to twelve (12) accredited investors.
​
(c)
From January 2017 through the date hereof, we granted to our employees, directors, consultants and other service providers stock options to purchase an aggregate of 4,021,399 shares of common stock under our 2012 Stock Option and Grant Plan, as amended, or 2012 Plan, at exercise prices per share ranging from $0.64 to $4.86. The grants were as follows:
​
•
On April 26, 2017, June 22, 2017 and September 21, 2017, we granted stock options to purchase 597,339, 484,000 and 4,000 shares, respectively, of common stock under our 2012 Stock Option and Grant Plan, as amended, or 2012 Plan, at an exercise price of $1.07.
​
•
On March 20, 2018, April 24, 2018, June 14, 2018, July 24, 2018, September 26, 2018, November 13, 2018, December 13, 2018 and January 21, 2019, we granted stock options
​
 
II-2
​
 
to purchase 204,500, 121,500, 18,000, 2,000, 21,000, 7,000, 9,000 and 516,000 shares, respectively, of common stock under our 2012 Plan, at an exercise price of  $0.97.
•
On April 24, 2019, June 20, 2019, September 10, 2019, November 13, 2019, December 12, 2019, January 31, 2020 and March 25, 2020, we granted stock options to purchase 42,000, 26,000, 30,500, 20,000, 4,000, 46,000, and 11,000 shares, respectively, of common stock under our 2012 Plan, at an exercise price of  $1.10.
​
•
On June 16, 2020, July 28, 2020 and August 27, 2020, we granted stock options to purchase 44,000, 4,000 and 289,500 shares, respectively, of common stock under our 2012 Plan, at an exercise price of  $0.64.
​
•
On September 14, 2020, September 21, 2020 and September 30, 2020 we granted stock options to purchase 629,000, 512,000 and 175,000 shares, respectively, of common stock under our 2012 Plan, at an exercise price of  $1.99.
​
•
On November 3, 2020, we granted stock options to purchase 204,000 shares of common stock under our 2012 Plan, at an exercise price of  $4.86
​
(d)
During the period from January 1, 2017 through the date hereof, an aggregate of 265,892 shares were issued upon the exercise of stock options, at exercise prices between $0.21 and $1.07 per share, for aggregate proceeds of  $95,592. The exercises were as follows:
​
•
On March 6, 2017, 2,500 shares were issued upon the exercise of stock options, at exercise prices of  $0.57 per share, for proceeds of  $1,425.00.
​
•
On September 26, 2017, 14,375 shares were issued upon the exercise of stock options, at exercise prices of  $0.32 per share, for proceeds of  $4,600.00.
​
•
On October 11, 2017, 3,000, 3,000 and 2,000 shares were issued upon the exercise of stock options, at exercise prices of  $0.21, $0.32 and $0.57 per share, respectively, for proceeds of  $2,730.00.
​
•
On November 15, 2017, 2,656 shares were issued upon the exercise of stock options, at exercise prices of  $0.57 per share, for proceeds of  $1,513.92.
​
•
On February 5, 2018, 4,708 shares were issued upon the exercise of stock options, at exercise prices of  $0.59 per share, for proceeds of  $2,777.72.
​
•
On February 27, 2018, 15,000 and 2,031 shares were issued upon the exercise of stock options, at exercise prices of  $0.21 and $0.59 per share, respectively, for proceeds of $4,348.29.
​
•
On April 4, 2018, 15,000 shares were issued upon the exercise of stock options, at exercise prices of  $0.32 per share, for proceeds of  $4,800.00.
​
•
On April 9, 2018, 2,083 shares were issued upon the exercise of stock options, at exercise prices of  $0.59 per share, for proceeds of  $1,228.97.
​
•
On April 13, 2018, 2,395 shares were issued upon the exercise of stock options, at exercise prices of  $0.32 per share, for proceeds of  $766.40.
​
•
On August 2, 2018, 1,416 shares were issued upon the exercise of stock options, at exercise prices of  $1.07 per share, for proceeds of  $1,515.12.
​
•
On August 6, 2018, 3,500 and 312 shares were issued upon the exercise of stock options, at exercise prices of  $0.21 and $1.07 per share, respectively, for proceeds of $1,068.84.
​
•
On October 2, 2018, 149,010 shares were issued upon the exercise of stock options, at exercise prices of  $0.32 per share, for proceeds of  $47,683.20.
​
•
On November 12, 2018 2,125 shares were issued upon the exercise of stock options, at exercise prices of  $1.07 per share, for proceeds of  $2,273.75.
​
•
On November 19, 2018, 989 shares were issued upon the exercise of stock options, at exercise prices of  $1.07 per share, for proceeds of  $1,058.23.
​
•
On December 10, 2018, 9,583 shares were issued upon the exercise of stock options, at exercise prices of  $0.38 per share, for proceeds of  $3,641.54.
​
•
On September 14, 2019, 700 shares were issued upon the exercise of stock options, at exercise prices of  $1.07 per share, for proceeds of  $727.50.
​
 
II-3
​
 
•
On January 13, 2020, 3,854 shares were issued upon the exercise of stock options, at exercise prices of  $0.59 per share, for proceeds of  $2,273.86.
​
•
On January 27, 2020, 1,041 shares were issued upon the exercise of stock options, at exercise prices of  $1.07 per share, for proceeds of  $1,113.87.
​
•
On April 9, 2020, 750 shares were issued upon the exercise of stock options, at exercise prices of  $0.97 per share, for proceeds of  $727.50.
​
•
On July 14, 2020, 10,000 and 1,625 shares were issued upon the exercise of stock options, at exercise prices of  $0.32 and $0.97 per share, respectively, for proceeds of $4,776.25.
​
•
On October 9, 2020, 10,000 and 2,239 shares were issued upon the exercise of stock options, at exercise prices of  $0.32 and $0.59 per share, respectively, for proceeds of $4,521.01.
​
(e)
In connection with the March 2017 loan, the Company issued to the lender a warrant to purchase 79,856 shares of Series D Preferred Stock at a purchase price of  $5.6351 per share.
​
(f)
In connection with the Company’s lease agreement entered into in January 2018, the Company issued to its landlord a warrant to purchase 70,983 shares of Series D Preferred Stock, at an exercise price of  $5.6351 per share
​
(g)
In connection with the 2019 Loan (in August 2019), the Company issued to the lender a warrant to purchase 35,771 shares of Series E Preferred Stock at an exercise price of  $6.29 per share.
​
The offers, sales and issuances of the securities described in paragraphs (a), (b), (d), (e) and (f) were exempt from registration under the Securities Act under Section 4(a)(2) of the Securities Act or Regulation D promulgated thereunder as transactions by an issuer not involving a public offering. The recipients of securities in each of these transactions acquired the securities for investment only and not with a view to or for sale in connection with any distribution thereof and appropriate legends were affixed to the securities issued in these transactions. Each of the recipients of securities in these transactions was an accredited person and had adequate access, through employment, business or other relationships, to information about the registrant.
The offers, sales and issuances of the securities described in paragraph (c) were exempt from registration under the Securities Act under either (i) Rule 701 in that the transactions were under compensatory benefit plans and contracts relating to compensation as provided under Rule 701 or (ii) Section 4(a)(2) of the Securities Act as transactions by an issuer not involving any public offering. The recipients of such securities were the registrant’s employees, consultants or directors and received the securities under our 2012 Plan. The recipients of securities in each of these transactions represented their intention to acquire the securities for investment only and not with view to or for sale in connection with any distribution thereof and appropriate legends were affixed to the securities issued in these transactions.
 
II-4
​
 
Item 16.   Exhibits and Financial Statement Schedules.
(a) Exhibits.
EXHIBIT
NUMBER 		​ ​
EXHIBIT TABLE
​
1.1* ​ ​ Form of Underwriting Agreement ​
3.1** ​ ​ Fifth Amended and Restated Certificate of Incorporation of the Registrant, as currently in effect ​
3.2** ​ ​ Certificate of Amendment to the Fifth Amended and Restated Certificate of Incorporation of the Registrant ​
3.3 ​ ​ Form of Sixth Amended and Restated Certificate of Incorporation of the Registrant, to be in effect upon the closing of this offering ​
3.4** ​ ​ By-laws of the Registrant, as currently in effect ​
3.5 ​ ​ Form of Amended and Restated By-laws of the Registrant, to be in effect upon the closing of this offering. ​
4.1 ​ ​ Fourth Amended and Restated Stockholders Agreement among the Registrant, certain of its stockholders and its investors, dated April 12, 2019 ​
4.2 ​ ​ Fourth Amended and Restated Registration Rights Agreement among the Registrant, certain of its stockholders and its investors, dated April 12, 2019 ​
4.3* ​ ​ Form of Specimen Common Stock Certificate ​
5.1* ​ ​ Opinion of Goodwin Procter LLP ​
10.1**# ​ ​ 2012 Stock Option and Grant Plan, as amended and forms of award agreements thereunder ​
10.2# ​ ​ 2020 Stock Option and Incentive Plan and forms of award agreements thereunder ​
10.3# ​ ​ Form of Director Indemnification Agreement ​
10.4# ​ ​ Form of Executive Officer Indemnification Agreement ​
10.5# ​ ​ Form of Executive Officer Employment Agreement ​
10.6**† ​ ​ Amended and Restated Exclusive License Agreement between the Registrant and The University of North Carolina at Chapel Hill, dated May 20, 2015, as amended ​
10.7**† ​ ​ Limited Exclusive Commercial Field of Use Patent License Agreement between the Registrant and UT-Battle LLC, dated June 13, 2012, as amended (PLA-1670) ​
10.8**† ​ ​ Limited Exclusive Commercial Field of Use Patent License Agreement between the Registrant and UT-Battle LLC, dated June 13, 2012, as amended (PLA-1699) ​
10.9† ​ ​ Loan and Security Agreement between the Registrant and Signature Bank, dated August 29, 2019 ​
10.10† ​ ​ First Amendment to Loan and Security Agreement between the Registrant and Signature Bank, dated March 15, 2020 ​
10.11† ​ ​ Second Amendment to Loan and Security Agreement between the Registrant and Signature Bank, dated August 7, 2020 ​
10.12 ​ ​ Lease by Harbor Industrial Development LLC to the Registrant, dated January 2, 2018, as amended ​
21.1* ​ ​ Subsidiaries of the Registrant ​
23.1 ​ ​ ​
23.2* ​ ​ Consent of Goodwin Procter LLP (included in Exhibit 5.1) ​
24.1 ​ ​ Power of Attorney (included on signature page to this registration statement) ​
​
*
To be filed by amendment.
​
**
Filed herewith
​
#
Indicates a management contract or any compensatory plan, contract or arrangement.
​
†
Portions of this exhibit (indicated by asterisks) will be omitted in accordance with the rules of the Securities and Exchange Commission.
​
 
II-5
​
 
(b) Financial Statements Schedules:
All schedules are omitted because the required information is either not present, not present in material amounts or is presented within the financial statements included in the prospectus that is part of this registration statement.
Item 17.   Undertakings.
Insofar as indemnification for liabilities arising under the Securities Act of 1933, as amended, or the Act, may be permitted to directors, officers and controlling persons of the Registrant pursuant to the foregoing provisions, or otherwise, the Registrant has been advised that in the opinion of the Securities and Exchange Commission such indemnification is against public policy as expressed in the Act and is therefore unenforceable. In the event that a claim for indemnification against such liabilities (other than the payment by the Registrant of expenses incurred or paid by a director, officer or controlling person of the Registrant in the successful defense of any action, suit or proceeding) is asserted by such director, officer or controlling person in connection with the securities being registered, the Registrant will, unless in the opinion of its counsel the matter has been settled by controlling precedent, submit to a court of appropriate jurisdiction the question whether such indemnification by it is against public policy as expressed in the Act and will be governed by the final adjudication of such issue.
The Registrant hereby undertakes that:
(a)   The Registrant will provide to the underwriter at the closing as specified in the underwriting agreement, certificates in such denominations and registered in such names as required by the underwriter to permit prompt delivery to each purchaser.
(b)   For purposes of determining any liability under the Securities Act of 1933, as amended, the information omitted from a form of prospectus filed as part of this registration statement in reliance upon Rule 430A and contained in the form of prospectus filed by the Registrant pursuant to Rule 424(b)(1) or (4) or 497(h) under the Securities Act of 1933, as amended, shall be deemed to be part of this registration statement as of the time it was declared effective.
(c)   For the purpose of determining any liability under the Securities Act of 1933, as amended, each post-effective amendment that contains a form of prospectus shall be deemed to be a new registration statement relating to the securities offered therein, and the offering of such securities at that time shall be deemed to be the initial bona fide offering thereof.
 
II-6
​​
 
SIGNATURES
Pursuant to the requirements of the Securities Act of 1933, the registrant has duly caused this Registration Statement on Form S-1 to be signed on its behalf by the undersigned, thereunto duly authorized, in the City of Boston, Massachusetts, on the day of December 1, 2020.
908 DEVICES INC.
By:
/s/ Kevin J. Knopp, Ph.D.
​
​
Name: Kevin J. Knopp, Ph.D.
Title: Chief Executive Officer and Director
Pursuant to the requirements of the Securities Act of 1933, as amended, this Registration Statement and Power of Attorney has been signed by the following person in the capacities on December 1, 2020.
​
Signature
​ ​
Title
​
​
/s/ Kevin J. Knopp, Ph.D.
​
Kevin J. Knopp, Ph.D.
​ ​
Chief Executive Officer and Director
(Principal Executive Officer)
​
​
/s/ Joseph H. Griffith IV
​
Joseph H. Griffith IV
​ ​
Chief Financial Officer
(Principal Financial and Accounting Officer)
​
​
*
​
Nicolas Barthelemy
​ ​
Director
​
​
*
​
Keith L. Crandell
​ ​
Director
​
​
*
​
E. Kevin Hrusovsky
​ ​
Director
​
​
*
​
Sharon Kedar
​ ​
Director
​
​
*
​
J. Michael Ramsey, Ph.D.
​ ​
Director
​
​
*
​
Mark Spoto
​ ​
Director
​
​
*By:
/s/ Kevin J. Knopp, Ph.D.
​
​
Kevin J. Knopp, Ph.D.
Attorney-in-Fact
​ ​ ​ ​ ​ ​ ​
 
II-7

Exhibit 3.1

 

FIFTH AMENDED AND RESTATED

 

CERTIFICATE OF INCORPORATION

 

OF

 

908 DEVICES INC.

 

908 Devices Inc., a corporation organized and existing under the General Corporation Law of the State of Delaware (the “Corporation”), DOES HEREBY CERTIFY:

 

FIRST: The original Certificate of Incorporation of the Corporation was filed with the Secretary of State of Delaware on February 10, 2012 under the name “908 Devices Inc.”

 

SECOND: The Fifth Amended and Restated Certificate of Incorporation of the Corporation in the form attached hereto as Exhibit A has been duly adopted in accordance with the provisions of Sections 228, 242 and 245 of the General Corporation Law of the State of Delaware by the directors and stockholders of the Corporation.

 

THIRD: The Fifth Amended and Restated Certificate of Incorporation so adopted reads in full as set forth in Exhibit A attached hereto and is hereby incorporated herein by this reference.

 

IN WITNESS WHEREOF, the Corporation has caused this Certificate to be signed by the President this 11th day of April, 2019.

 

  908 DEVICES INC.
   
   
By:  
    Kevin Knopp, President

 

 

 

 

EXHIBIT A

 

FIFTH AMENDED AND RESTATED

 

CERTIFICATE OF INCORPORATION

 

OF

 

908 DEVICES INC.

 

ARTICLE I

 

The name of the Corporation is 908 Devices Inc.

 

ARTICLE II

 

The address of the Corporation’s registered office in the State of Delaware is Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware 19801, County of New Castle. The name of its registered agent at such address is The Corporation Trust Company.

 

ARTICLE III

 

The purpose of the Corporation is to engage in any lawful act or activity for which corporations may be organized under the General Corporation Law of the State of Delaware.

 

ARTICLE IV

 

The total number of shares of capital stock which the Corporation shall have authority to issue is 61,061,965, of which (i) 24,121,106 shares shall be preferred stock, par value $0.001 per share (the “Preferred Stock”), and (ii) 36,940,859 shares shall be common stock, par value $0.001 per share (the “Common Stock”).

 

The voting powers, designations, preferences, powers and relative, participating, optional or other special rights, and the qualifications, limitations or restrictions of each class of capital stock of the Corporation, shall be as provided in this Article IV.

 

A.            PREFERRED STOCK

 

1.            Designation. A total of 8,490,778 shares of the Corporation’s Preferred Stock shall be designated as a series known as Series A Participating Convertible Preferred Stock, par value $0.001 per share (the “Series A Preferred Stock”). A total of 4,650,216 shares of the Corporation’s Preferred Stock shall be designated as a series known as Series B Participating Convertible Preferred Stock, par value $0.001 per share (the “Series B Preferred Stock”). A total of 3,788,068 shares of the Corporation’s Preferred Stock shall be designated as a series known as Series C Participating Convertible Preferred Stock, par value $0.001 per share (the “Series C Preferred Stock”). A total of 4,409,850 shares of the Corporation’s Preferred Stock shall be designated as a series known as Series D Participating Convertible Preferred Stock, par value $0.001 per share (the “Series D Preferred Stock”). A total of 2,782,194 shares of the Corporation’s Preferred Stock shall be designated as a series known as Series E Participating Convertible Preferred Stock, par value $0.001 per share (the “Series E Preferred Stock”).

 

 

 

 

2.            Voting.

 

(a)            Election of Series A Director. The holders of outstanding shares of Series A Preferred Stock shall, voting together as a single class, be entitled to elect one (1) Director of the Corporation (a “Series A Director”). Except as provided in Section A.2(a)(iv) below, such Director shall be elected by a plurality vote, with the elected candidate being the candidate receiving the greatest number of affirmative votes (with each holder of Series A Preferred Stock entitled to cast one vote for or against each candidate with respect to each share of Series A Preferred Stock held by such holder) of the outstanding shares of Series A Preferred Stock, with votes cast against such candidates and votes withheld having no legal effect. The election of such Director shall occur (i) at the annual meeting of holders of capital stock, (ii) at any special meeting of holders of capital stock if such meeting is called for the purpose of electing directors, (iii) at any special meeting of holders of Series A Preferred Stock called by holders of not less than a majority of the outstanding shares of Series A Preferred Stock or (iv) by the written consent of holders of a majority of the outstanding shares of Series A Preferred Stock. If at any time when any share of Series A Preferred Stock is outstanding any such Director should cease to be a Director for any reason, the vacancy shall only be filled by the vote or written consent of the holders of the outstanding shares of Series A Preferred Stock, voting together as a separate class, in the manner and on the basis specified above or as otherwise provided by law. The holders of outstanding shares of Series A Preferred Stock may, in their sole discretion, determine not to elect one or more Directors as provided herein from time to time, and during any such period the Board of Directors shall not be deemed unduly constituted solely as a result of such vacancy.

 

(b)            Election of Series B Director. The holders of outstanding shares of Series B Preferred Stock shall, voting together as a single class, be entitled to elect one (1) Director of the Corporation (a “Series B Director”). Except as provided in Section A.2(b)(iv) below, such Director shall be elected by a plurality vote, with the elected candidate being the candidate receiving the greatest number of affirmative votes (with each holder of Series B Preferred Stock entitled to cast one vote for or against each candidate with respect to each share of Series B Preferred Stock held by such holder) of the outstanding shares of Series B Preferred Stock, with votes cast against such candidates and votes withheld having no legal effect. The election of such Directors shall occur (i) at the annual meeting of holders of capital stock, (ii) at any special meeting of holders of capital stock if such meeting is called for the purpose of electing directors, (iii) at any special meeting of holders of Series B Preferred Stock called by holders of not less than a majority of the outstanding shares of Series B Preferred Stock or (iv) by the written consent of holders of a majority of the outstanding shares of Series B Preferred Stock. If at any time when any share of Series B Preferred Stock is outstanding any such Director should cease to be a Director for any reason, the vacancy shall only be filled by the vote or written consent of the holders of the outstanding shares of Series B Preferred Stock, voting together as a separate class, in the manner and on the basis specified above or as otherwise provided by law. The holders of outstanding shares of Series B Preferred Stock may, in their sole discretion, determine not to elect such Director as provided herein from time to time, and during any such period the Board of Directors shall not be deemed unduly constituted solely as a result of such vacancy.

 

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(c)            Election of Series E Director. The holders of outstanding shares of Series E Preferred Stock shall, voting together as a single class, be entitled to elect one (1) Director of the Corporation (a “Series E Director,” and collectively with the Series A Director and Series B Director, the “Preferred Directors”). Except as provided in Section A.2(c)(iv) below, such Director shall be elected by a plurality vote, with the elected candidate being the candidate receiving the greatest number of affirmative votes (with each holder of Series E Preferred Stock entitled to cast one vote for or against each candidate with respect to each share of Series E Preferred Stock held by such holder) of the outstanding shares of Series E Preferred Stock, with votes cast against such candidates and votes withheld having no legal effect. The election of such Directors shall occur (i) at the annual meeting of holders of capital stock, (ii) at any special meeting of holders of capital stock if such meeting is called for the purpose of electing directors, (iii) at any special meeting of holders of Series E Preferred Stock called by holders of not less than a majority of the outstanding shares of Series E Preferred Stock or (iv) by the written consent of holders of a majority of the outstanding shares of Series E Preferred Stock. If at any time when any share of Series E Preferred Stock is outstanding any such Director should cease to be a Director for any reason, the vacancy shall only be filled by the vote or written consent of the holders of the outstanding shares of Series E Preferred Stock, voting together as a separate class, in the manner and on the basis specified above or as otherwise provided by law. The holders of outstanding shares of Series E Preferred Stock may, in their sole discretion, determine not to elect such Director as provided herein from time to time, and during any such period the Board of Directors shall not be deemed unduly constituted solely as a result of such vacancy.

 

(d)            Election of Remaining Directors. The holders of record of the shares of Common Stock and of any other class or series of voting stock (including the Series A Preferred Stock, Series B Preferred Stock, Series C Preferred Stock, Series D Preferred Stock and Series E Preferred Stock), exclusively and voting together as a single class, shall be entitled to elect the balance of the total number of directors of the Corporation not elected pursuant to Sections A.2(a), A.2(b), and A.2(c).

 

(e)            Voting Generally. Each outstanding share of Preferred Stock shall be entitled to a number of votes equal to the number of shares of Common Stock into which such share of Preferred Stock is then convertible pursuant to Section A.6 hereof as of the record date for the vote or written consent of stockholders, if applicable. Each holder of outstanding shares of Preferred Stock shall be entitled to notice of any stockholders’ meeting in accordance with the by-laws of the Corporation (the “By-laws”) and shall vote with holders of the Common Stock, voting together as a single class, upon all matters submitted to a vote of stockholders, excluding those matters required to be submitted to a class or series vote pursuant to the terms hereof (including, without limitation, Section A.8) or by law.

 

3.            Dividends.

 

(a)            The holders of shares of Series E Preferred Stock, in preference to the holders of Series D Preferred Stock, Series C Preferred Stock, Series B Preferred Stock, Series A Preferred Stock and Common Stock, shall be entitled to receive, when, as and if declared by the Board of Directors out of funds legally available therefor, noncumulative dividends at the rate of eight percent (8%) per share of the Series E Original Issue Price per annum (as adjusted for subsequent stock dividends, stock splits, combinations, recapitalizations or the like with respect to such share) from the date of original issuance of such share (the “Closing Date”).

 

(b)            The holders of shares of Series D Preferred Stock, in preference to the holders of Series C Preferred Stock, Series B Preferred Stock, Series A Preferred Stock and Common Stock, shall be entitled to receive, when, as and if declared by the Board of Directors out of funds legally available therefor, noncumulative dividends at the rate of eight percent (8%) per share of the Series D Original Issue Price per annum (as adjusted for subsequent stock dividends, stock splits, combinations, recapitalizations or the like with respect to such share) from the Closing Date with respect to such share.

 

(c)            The holders of shares of Series C Preferred Stock, in preference to the holders of Series B Preferred Stock, Series A Preferred Stock and Common Stock, shall be entitled to receive, when, as and if declared by the Board of Directors out of funds legally available therefor, noncumulative dividends at the rate of eight percent (8%) per share of the Series C Original Issue Price per annum (as adjusted for subsequent stock dividends, stock splits, combinations, recapitalizations or the like with respect to such share) from the Closing Date with respect to such share.

 

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(d)            The holders of shares of Series B Preferred Stock and Series A Preferred Stock, in preference to the holders of Common Stock, shall be entitled to receive, when, as and if declared by the Board of Directors out of funds legally available therefor, noncumulative dividends at the rate of eight percent (8%) per share of the applicable Original Issue Price of such series of Preferred Stock per annum (as adjusted for subsequent stock dividends, stock splits, combinations, recapitalizations or the like with respect to such share) from the Closing Date with respect to such share.

 

(e)            Subject to obtaining any consent required under Section A.8(f) below, after the foregoing dividends on the Preferred Stock shall have been paid, then the Corporation may (when, as and if declared by the Board of Directors) declare and distribute in such year dividends among the holders of Preferred Stock and the holders of Common Stock pro rata based on the number of shares of Common Stock held by each, determined on an as-if-converted basis (assuming full conversion of all such shares of such series of Preferred Stock) as of the record date with respect to the declaration of such dividends. For the avoidance of doubt, the holders of Series A Preferred Stock, Series B Preferred Stock, Series C Preferred Stock, Series D Preferred Stock and Series E Preferred Stock shall participate on a pari passu basis in any distribution or dividend declared or paid to the Common Stock or any series of Preferred Stock ranking junior to the Series A Preferred Stock, Series B Preferred Stock, Series C Preferred Stock, Series D Preferred Stock and Series E Preferred Stock on the basis of the number of shares of Common Stock into which it is then convertible.

 

4.            Liquidation; Merger, etc.

 

(a)            Series E Preferred Stock Liquidation Preference. Upon any liquidation, dissolution or winding up of the Corporation and its subsidiaries, whether voluntary or involuntary (a “Liquidation Event”), each holder of outstanding shares of Series E Preferred Stock shall be entitled to be paid in cash, before any amount shall be paid or distributed to the holders of the Series D Preferred Stock, Series C Preferred Stock, Series B Preferred Stock, Series A Preferred Stock, Common Stock or any other capital stock ranking on liquidation junior to the Series E Preferred Stock, an amount (the “Series E Preference Amount”) per share equal to (A) $6.29 (as adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like, the “Series E Original Issue Price”), plus (B) an amount equal to all declared but unpaid dividends on such share of Series E Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like). If the amounts available for distribution by the Corporation to holders of Series E Preferred Stock upon a Liquidation Event are not sufficient to pay the aggregate Series E Preference Amount due to such holders, such holders of Series E Preferred Stock shall share ratably on a pari passu basis in any distribution in connection with such Liquidation Event in proportion to the full respective preferential amounts to which they are entitled with respect to shares of Series E Preferred Stock.

 

(b)            Series D Preferred Stock Liquidation Preference. Upon any Liquidation Event, following payment of the Series E Preference Amount, each holder of outstanding shares of Series D Preferred Stock shall be entitled to be paid in cash, before any amount shall be paid or distributed to the holders of the Series C Preferred Stock, Series B Preferred Stock, Series A Preferred Stock, Common Stock or any other capital stock ranking on liquidation junior to the Series D Preferred Stock, an amount (the “Series D Preference Amount”) per share equal to (A) $5.6351 (as adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like, the “Series D Original Issue Price”), plus (B) an amount equal to all declared but unpaid dividends on such share of Series D Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like). If the amounts available for distribution by the Corporation to holders of Series D Preferred Stock upon a Liquidation Event are not sufficient to pay the aggregate Series D Preference Amount due to such holders, such holders of Series D Preferred Stock shall share ratably on a pari passu basis in any distribution in connection with such Liquidation Event in proportion to the full respective preferential amounts to which they are entitled with respect to shares of Series D Preferred Stock.

 

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(c)            Series C Preferred Stock Liquidation Preference. Upon any Liquidation Event, following payment of each of the Series E Preference Amount and the Series D Preference Amount, each holder of outstanding shares of Series C Preferred Stock shall be entitled to be paid in cash, before any amount shall be paid or distributed to the holders of the Series B Preferred Stock, Series A Preferred Stock, Common Stock or any other capital stock ranking on liquidation junior to the Series C Preferred Stock, an amount (the “Series C Preference Amount”) per share equal to (A) $3.45 (as adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like, the “Series C Original Issue Price”), plus (B) an amount equal to all declared but unpaid dividends on such share of Series C Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like). If the amounts available for distribution by the Corporation to holders of Series C Preferred Stock upon a Liquidation Event are not sufficient to pay the aggregate Series C Preference Amount due to such holders, such holders of Series C Preferred Stock shall share ratably on a pari passu basis in any distribution in connection with such Liquidation Event in proportion to the full respective preferential amounts to which they are entitled with respect to shares of Series C Preferred Stock.

 

(d)            Series A and B Preferred Stock Liquidation Preference. Upon a Liquidation Event, following payment of each of the Series E Preference Amount, Series D Preference Amount and Series C Preference Amount in full, each holder of outstanding shares of Series A Preferred Stock and Series B Preferred Stock shall be entitled to be paid in cash, before any amount shall be paid or distributed to the holders of the Common Stock or any other capital stock ranking on liquidation junior to the Series A Preferred Stock and Series B Preferred Stock (the Common Stock and such other capital stock being referred to collectively as, “Junior Stock”), an amount per share equal to (x) in the case of the Series A Preferred Stock (the “Series A Preference Amount”), (A) $1.00 (as adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like, the “Series A Original Issue Price”), plus (B) an amount equal to all declared but unpaid dividends on such share of Series A Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like) and (y) in the case of the Series B Preferred Stock (the “Series B Preference Amount”), (A) $1.801 (as adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like, the “Series B Original Issue Price”), plus (B) an amount equal to all declared but unpaid dividends on such share of Series B Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like). The “Original Issue Price” shall mean the Series A Original Issue Price, in the case of the Series A Preferred Stock, the Series B Original Issue Price, in the case of the Series B Preferred Stock, the Series C Original Issue Price, in the case of the Series C Preferred Stock, the Series D Original Issue Price, in the case of the Series D Preferred Stock and the Series E Original Issue Price, in the case of the Series E Preferred Stock. If the amounts available for distribution by the Corporation to holders of Series A Preferred Stock and Series B Preferred Stock upon a Liquidation Event are not sufficient to pay the aggregate Series A Preference Amount and Series B Preference Amount due to such holders, such holders of Series A Preferred Stock and Series B Preferred Stock shall share ratably on a pari passu basis in any distribution in connection with such Liquidation Event in proportion to the full respective preferential amounts to which they are entitled with respect to shares of Series A Preferred Stock and/or Series B Preferred Stock.

 

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(e)            Participation Rights. If the assets and funds of the Corporation legally available for distribution to the Corporation’s stockholders exceed the aggregate preferential amounts payable to the holders of Series E Preferred Stock, Series D Preferred Stock, Series C Preferred Stock, Series B Preferred Stock and Series A Preferred Stock pursuant to Sections A.4(a), A.4(b), A.4(c) and A.4(d), then, after such preferential amounts (including the full Series E Preference Amount, Series D Preference Amount, Series C Preference Amount, Series B Preference Amount and Series A Preference Amount) shall have been paid, the remaining assets and funds of the Corporation available for distribution to the Corporation’s stockholders shall be distributed, subject to Section A.4(i), ratably among the holders of shares of Series E Preferred Stock, Series D Preferred Stock, Series C Preferred Stock, Series B Preferred Stock, Series A Preferred Stock and Common Stock, in each case in accordance with their terms (where each outstanding share of Preferred Stock is treated for this purpose as having been converted into the largest number of shares of Common Stock into which such share of Preferred Stock could then be converted pursuant to Section A.6) until (i) for the holders of Series E Preferred Stock, the aggregate amount of the payments made to such holders pursuant to Section A.4(a) and this Section A.4(e) equals two and one half times the aggregate Series E Preference Amount, (ii) for the holders of Series D Preferred Stock, the aggregate amount of the payments made to such holders pursuant to Section A.4(b) and this Section A.4(e) equals two times the aggregate Series D Preference Amount, (iii) for the holders of Series C Preferred Stock, the aggregate amount of the payments made to such holders pursuant to Section A.4(c) and this Section A.4(e) equals three times the aggregate Series C Preference Amount, (iv) for the holders of Series B Preferred Stock, the aggregate amount of the payments made to such holders pursuant to Section A.4(d) and this Section A.4(e) equals three times the aggregate Series B Preference Amount, and (v) for the holders of Series A Preferred Stock, the aggregate amount of the payments made to such holders pursuant to Section A.4(d) and this Section A.4(e) equals four times the aggregate Series A Preference Amount. Thereafter, any remaining assets and funds of the Corporation available for distribution to the Corporation’s stockholders shall be distributed ratably among the holders of Common Stock. In the event that a share of Series E Preferred Stock, Series D Preferred Stock, Series C Preferred Stock, Series B Preferred Stock and/or Series A Preferred Stock would be entitled to an amount in excess of amounts that such share would be entitled to pursuant to the foregoing provisions of Sections A.4(a) through (e) in connection with a Liquidation Event, if such share of Preferred Stock was converted to a share of Common Stock pursuant to Section A.6(a) as of immediately prior to the Liquidation Event and shared ratably in any distribution in connection with such Liquidation Event on an as converted to Common Stock basis, then such share shall be deemed to have so converted.

 

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(f)            Deemed Liquidation Events. Each of the following events shall be treated as a Liquidation Event, unless the holders of (i) a majority of the voting power of the outstanding shares of Preferred Stock voting together as a single class (a “Majority Interest”) and (ii) a majority of the outstanding shares of Series E Preferred Stock (the “Series E Deemed Liquidation Consent”) elect otherwise; provided however, if the amounts available for distribution by the Corporation to holders of Series D Preferred Stock upon such Liquidation Event would not be sufficient to pay the aggregate Series D Preference Amount if such event was treated as a Liquidation Event, such waiver shall also require the written election of the holders of not less than sixty percent (60%) of the Series D Preferred Stock then outstanding (the “Series D Deemed Liquidation Consent”), provided further, that the Series E Deemed Liquidation Consent and the Series D Deemed Liquidation Consent shall not be required in connection with a Change of Control Transaction in which (i) the holders of capital stock of the Corporation immediately prior to such Change of Control Transaction continue to hold at least thirty five percent (35%) of the voting power of the capital stock of the surviving business entity in equal proportion to their holdings prior to such Change of Control Transaction, (ii) no cash consideration is paid to any holder of capital stock of the Corporation in such holder’s capacity as a holder of capital stock of the Corporation, (iii) the acquirer in such transaction does not have an effective registration statement under the Securities Act of 1933, as amended (the “Securities Act”) and (iv) there is no readily available public market for the capital stock received by the holders of capital stock of the Corporation in connection with such transaction: (A) any merger or consolidation of the Corporation into or with another business entity (except one in which the shares of capital stock of the Corporation immediately prior to such merger or consolidation continue to represent at least a majority of the voting power of the capital stock of the surviving business entity) (a “Change of Control Transaction”), (B) any sale, lease, transfer, exclusive license or other disposition, in a single transaction or series of related transactions, of all or substantially all of the assets of the Corporation and its subsidiaries taken as a whole (an “Asset Sale”), or (C) a sale, lease, transfer, exclusive license or other disposition, in a single transaction or series of related transactions, of all or substantially all of the Corporation’s and its subsidiaries’ intellectual property (together with any Asset Sale, each a “Disposition”). All consideration payable to the stockholders of the Corporation in connection with any such Change of Control Transaction, or all consideration payable to the Corporation, together with all other available assets of the Corporation (net of obligations owed by the Corporation that are senior to the Preferred Stock), in connection with any Disposition, upon the consummation of such Change of Control Transaction, shall be, as applicable, paid by the purchaser to the holders of, or distributed by the Corporation in redemption (out of funds legally available therefor) of, the Preferred Stock and any Junior Stock in accordance with the preferences and priorities set forth in Sections A.4(a), A.4(b), A.4(c), A.4(d) and A.4(e) above, with such preferences and priorities specifically intended to be applicable in any such Change of Control Transaction or Disposition, as if any such transaction were a Liquidation Event. In furtherance of the foregoing, the Corporation shall take such actions as are necessary to give effect to the provisions of this Section A.4(f), including without limitation, (1) in the case of a Change of Control Transaction, causing the definitive agreement relating to such Change of Control Transaction to provide for a rate at which the shares of Preferred Stock are converted into or exchanged for cash, new securities or other property which gives effect to the preferences and priorities set forth in Sections A.4(a), A.4(b), A.4(c), A.4(d) and A.4(e), or (2) in the case of a Disposition, redeeming the Preferred Stock in a manner that gives effect to the preferences and priorities set forth in Sections A.4(a), A.4(b), A.4(c), A.4(d) and A.4(e). The Corporation shall promptly provide to the holders of shares of Preferred Stock such information concerning the terms of such Change of Control Transaction or Disposition, and the value of the assets of the Corporation as may reasonably be requested by the holders of Preferred Stock. The amount deemed distributed to the holders of Preferred Stock upon any such transaction shall be the cash or the value of the property, rights or securities distributed to such holders by the Corporation or the acquiring person, firm or other entity, as applicable.

 

(g)            Valuation of Securities or Other Non-Cash Consideration. For purposes of valuing any securities or other noncash consideration to be delivered to the holders of the Preferred Stock in connection with any transaction to which Section A.4(f) is applicable, the following shall apply:

 

(i)            If any such securities are traded on a nationally recognized securities exchange or inter dealer quotation system, the value shall be deemed to be the average of the closing prices of such securities on such exchange or system over the 30 day period ending three (3) business days prior to the closing;

 

(ii)           If any such securities are traded over the counter, the value shall be deemed to be the average of the closing bid prices of such securities over the 30 day period ending three (3) business days prior to the closing; and

 

(iii)          If there is no active public market for such securities or other noncash consideration, the value shall be the fair market value thereof, as determined by the Board of Directors (including at least two of the Preferred Directors) in good faith, provided that if a Majority Interest objects to such valuation, the valuation shall be determined by a mutually agreed to investment banker, the fees of which shall be paid by the Corporation.

 

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(h)            Allocation. In the event of a Liquidation Event pursuant to Section A.4(f), if any portion of the consideration payable to the stockholders of the Corporation is placed into escrow and/or is payable to the stockholders of the Corporation subject to contingencies, the definitive agreement relating to such Liquidation Event shall provide that (i) the portion of such consideration that is not placed in escrow and not subject to any contingencies (the “Initial Consideration”) shall be allocated among the holders of capital stock of the Corporation in accordance with Sections A.4(a), A.4(b), A.4(c), A.4(d) and A.4(e) as if the Initial Consideration were the only consideration payable in connection with such Liquidation Event and (ii) any additional consideration which becomes payable to the stockholders of the Corporation upon release from escrow or satisfaction of contingencies shall be allocated among the holders of capital stock of the Corporation in accordance with Sections A.4(a), A.4(b), A.4(c), A.4(d) and A.4(e) after taking into account the previous payment of the Initial Consideration as part of the same transaction.

 

(i)            Series E Preferred Stock Proceeds. Notwithstanding anything set forth in this Section A.4 to the contrary, in the event of any liquidation, dissolution or winding up of the Corporation and its subsidiaries, including any event treated as a Liquidation Event pursuant to A.4(f), in which net proceeds to the Corporation’s equity holders (whether paid directly in a Change of Control Transaction or by redemption in a Disposition) is above One Hundred Seventy Five Million Dollars ($175,000,000), the Series E Preferred Stock will be entitled to receive total proceeds per share (treating escrow, holdback, earnouts and other contingent consideration in a manner consistent with Section A.4(h) herein) in an amount equal to no less than two times the Series E Original Issue Price prior to any distribution of such proceeds to other shares of capital stock.

 

5.            Redemption.

 

(a)            Optional Redemption; Redemption Date. At any time on or after April 11th, 2024, the holder(s) of a Majority Interest may elect to have all (but not less than all) of the outstanding shares of Preferred Stock redeemed. In such event, the Corporation shall redeem all (but not less than all) of the outstanding shares of Preferred Stock, out of funds legally available therefor, for an amount equal to the aggregate Redemption Price specified in Section A.5(b). Any election by a Majority Interest pursuant to this Section A.5(a) shall be made by written notice to the Corporation and the other holders of Preferred Stock at least fifteen (15) days prior to the elected redemption date (the “Redemption Date”). Upon such election, all holders of Preferred Stock shall be deemed to have elected to have their shares of Preferred Stock redeemed pursuant to this Section A.5(a) and such election shall bind all holders of Preferred Stock. Notwithstanding anything to the contrary contained herein, (i) each holder of shares of Preferred Stock shall have the right to elect to give effect to the conversion rights contained in Section A.6(a) instead of giving effect to the provisions contained in this Section A.5(a) with respect to the shares of Preferred Stock held by such holder, and (ii) each holder of Series E Preferred Stock shall have the right to opt out of such election to redeem shares of Series E Preferred Stock, instead of giving effect to the provisions contained in Section A.5(a) with respect to the shares of Series E Preferred Stock held by such holder.

 

(b)            Redemption Price. The price for each share of Preferred Stock redeemed pursuant to this Section A.5 shall be an amount equal to, (i) in the case of the Series A Preferred Stock, the Series A Original Issue Price plus an amount equal to all declared but unpaid dividends on such share of Series A Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like), (ii) in the case of the Series B Preferred Stock, the Series B Original Issue Price plus an amount equal to all declared but unpaid dividends on such share of Series B Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like), (iii) in the case of the Series C Preferred Stock, the Series C Original Issue Price plus an amount equal to all declared but unpaid dividends on such share of Series C Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like), (iv)  in the case of the Series D Preferred Stock, the Series D Original Issue Price plus an amount equal to all declared but unpaid dividends on such share of Series D Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like), and (v) in the case of the Series E Preferred Stock, the Series E Original Issue Price plus an amount equal to all declared but unpaid dividends on such share of Series E Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like) (the “Redemption Price”). The aggregate Redemption Price shall be payable in cash in immediately available funds to the respective holders of the Preferred Stock on the Redemption Date in accordance with the preferences and priorities set forth in Sections A.4(a), A.4(b), A.4(c), A.4(d) and A.4(e) above.

 

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(c)            Insufficient Funds. If the funds of the Corporation legally available to redeem shares of Preferred Stock on the Redemption Date are insufficient to redeem the total number of such shares required to be redeemed on such date, the Corporation shall (i) take any action necessary or appropriate, to the extent reasonably within its control, to remove promptly any impediments to its ability to redeem the total number of shares of Preferred Stock required to be so redeemed, including, without limitation, (A) to the extent permissible under applicable law, reducing the stated capital of the Corporation or causing a revaluation of the assets of the Corporation under Section 154 of the Delaware General Corporation Law to create sufficient surplus to make such redemption and (B) incurring any indebtedness necessary to make such redemption, and (ii) in any event, use any funds that are legally available to redeem the maximum possible number of such shares from the holders of such shares to be redeemed in proportion to the respective number of such shares that otherwise would have been redeemed if all such shares had been redeemed in full. At any time thereafter when additional funds of the Corporation are legally available to redeem such shares of Preferred Stock, the Corporation shall immediately use such funds to redeem the balance of the shares that the Corporation became obligated to redeem on the Redemption Date (but which it has not yet redeemed) at such applicable Redemption Price to the holders of Series A Preferred Stock, Series B Preferred Stock, Series C Preferred Stock, Series D Preferred Stock and Series E Preferred Stock in accordance with the preferences and priorities set forth in Sections A.4(a), A.4(b), A.4(c), A.4(d) and A.4(e) above (with all shares of Series E Preferred Stock to be redeemed prior to any other shares of Preferred Stock).

 

(d)            Interest. If any shares of Preferred Stock are not redeemed on the Redemption Date for any reason, all such unredeemed shares shall remain outstanding and entitled to all the rights and preferences provided herein, and the Corporation shall pay interest on the Redemption Price applicable to such unredeemed shares at an aggregate per annum rate equal to twelve percent (12%), with such interest to accrue daily in arrears and to be compounded annually; provided, however, that in no event shall such interest exceed the maximum permitted rate of interest under applicable law (the “Maximum Permitted Rate”). In the event that fulfillment of any provision hereof results in such rate of interest being in excess of the Maximum Permitted Rate, the amount of interest required to be paid hereunder shall automatically be reduced to eliminate such excess; provided, however, that any subsequent increase in the Maximum Permitted Rate shall be retroactively effective to the applicable Redemption Date to the extent permitted by law.

 

6.            Conversion. Shares of Preferred Stock shall be converted into Common Stock in accordance with the following:

 

(a)            Voluntary Conversion. The holders of shares of Preferred Stock may convert such shares into Common Stock at any time after the date of issuance of such shares of Preferred Stock as follows:

 

(i)            Upon the written election of the holder thereof and without payment of any additional consideration, each outstanding share of Preferred Stock held by such holder shall be converted into such number of fully paid and nonassessable shares of Common Stock as is determined by dividing (A) the applicable Original Issue Price plus an amount equal to all declared but unpaid dividends on such share of Preferred Stock (such amount to be adjusted for any stock splits, stock dividends, combinations, recapitalizations and the like), by (B) the applicable Conversion Price at the time in effect for such series of Preferred Stock (such quotient, the “Conversion Rate”). The initial “Conversion Price” per share for shares of Preferred Stock shall be the Original Issue Price for such series of Preferred Stock, subject to adjustment as set forth in Section A.7. Any election by a holder of Preferred Stock pursuant to this Section A.6(a)(i) shall be made by written notice to the Corporation, and such notice may be given at any time and from time to time after the Closing Date and through and including the day which is one (1) day prior to the Redemption Date or the closing of any transaction contemplated by Section A.4(e).

 

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(ii)            Upon the written election of both (i) a Majority Interest and (ii) holders of a majority of shares of Series E Preferred Stock then outstanding (a “Series E Majority”), without the payment of any additional consideration, all (but not less than all) of the outstanding shares of Preferred Stock shall be converted into fully paid and nonassessable shares of Common Stock at the applicable Conversion Rate. Any election by a Majority Interest pursuant to this Section A.6(a)(ii) shall be made by written notice to the Corporation and the other holders of Preferred Stock, and such notice may be given at any time after the Closing Date through and including the date which is one (1) day prior to the closing of any transaction contemplated by Section A.4(e). Upon such election, all holders of the Preferred Stock shall be deemed to have elected to voluntarily convert all outstanding shares of Preferred Stock into shares of Common Stock pursuant to this Section A.6(a)(ii) and such election shall bind all holders of Preferred Stock. Notwithstanding the foregoing, in the event a conversion pursuant to this Section A.6(a)(ii) is to occur in connection with a Liquidation Event, and the amounts available for distribution by the Corporation to holders of Series D Preferred Stock upon such Liquidation Event would not be sufficient to pay the aggregate Series D Preference Amount due to such holders, solely for purposes of this Section A.6(a)(ii) as it applies to the Series D Preferred Stock, in addition to the written election of a Majority Interest, the written election of the holders of not less than sixty percent (60%) of the Series D Preferred Stock then outstanding shall be required to consent to the conversion of all of the outstanding shares of Series D Preferred Stock into shares of Common Stock (the “Series D Conversion Approval”).

 

(b)            Automatic Conversion. Each share of Preferred Stock shall automatically be converted, without the payment of any additional consideration, into fully paid and nonassessable shares of Common Stock at the applicable Conversion Rate as of, and in all cases subject to, the closing of the Corporation’s first underwritten public offering on a firm commitment basis pursuant to an effective registration statement under the Securities Act covering the offer and sale of Common Stock (i) at a price per share of Common Stock of not less than $7.86 (appropriately adjusted for stock splits, stock dividends, combinations, recapitalizations and the like), and (ii) with respect to which the Corporation receives aggregate net proceeds attributable to sales for the account of the Corporation (before deduction of underwriting discounts and commissions) of not less than $40,000,000 (a “QPO”). If a closing of a QPO occurs, all outstanding shares of Preferred Stock shall be deemed to have been converted into shares of Common Stock immediately prior to such closing.

 

(c)            Procedure for Conversion.

 

(i)            Voluntary Conversion. Upon election to convert pursuant to Section A.6(a)(i), the relevant holder or holders of Preferred Stock shall surrender the certificate or certificates representing the shares of Preferred Stock being converted to the Corporation, duly assigned or endorsed for transfer to the Corporation (or accompanied by duly executed stock powers relating thereto) or shall deliver an affidavit of loss to the Corporation, at its principal executive office or such other place as the Corporation may from time to time designate by notice to the holders of the Preferred Stock. Upon surrender of such certificate(s) or delivery of an affidavit of loss, the Corporation shall issue and send by hand delivery, by courier or by first class mail (postage prepaid) to the holder thereof or to such holder’s designee, at the address designated by such holder, certificates for the number of shares of Common Stock to which such holder shall be entitled upon conversion. The issuance of certificates for Common Stock upon conversion of Preferred Stock shall be deemed effective as of the date of surrender of such Preferred Stock certificates or delivery of such affidavit of loss and will be made without charge to the holders of such shares for any issuance tax in respect thereof or other costs incurred by the Corporation in connection with such conversion and the related issuance of such stock.

 

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(ii)            Automatic Conversion. As of the closing of a QPO (the “Automatic Conversion Date”) or upon election to convert pursuant to Section A.6(a)(ii), all outstanding shares of Preferred Stock shall be converted into shares of Common Stock without any further action by the holders of such shares and whether or not the certificates representing such shares of Preferred Stock are surrendered to the Corporation. On the Automatic Conversion Date, all rights with respect to the shares of Preferred Stock so converted shall terminate, except any of the rights of the holders thereof upon surrender of their certificate or certificates therefor or delivery of an affidavit of loss thereof to receive certificates for the number of shares of Common Stock into which such shares of Preferred Stock have been converted. If so required by the Corporation, certificates surrendered for conversion shall be endorsed for transfer, in a form satisfactory to the Corporation, accompanied by duly executed stock powers related thereto. The Corporation shall issue and deliver to such holder, promptly (and in any event in such time as is sufficient to enable such holder to participate in such QPO) at such office and in its name as shown on such surrendered certificate or certificates, a certificate or certificates for the number of shares of Common Stock into which the shares of the Preferred Stock surrendered are convertible on the Automatic Conversion Date.

 

(d)            Reservation of Stock Issuable Upon Conversion. The Corporation shall at all times reserve and keep available out of its authorized but unissued shares of Common Stock, solely for the purpose of effecting the conversion of the shares of Preferred Stock, such number of its shares of Common Stock as shall from time to time be sufficient to effect the conversion of all outstanding shares of Preferred Stock; and if at any time the number of authorized but unissued shares of Common Stock shall not be sufficient to effect the conversion of all outstanding shares of Preferred Stock, the Corporation will take such corporate action as may be necessary to increase the number of its authorized but unissued shares of Common Stock to such number of shares as shall be sufficient for such purpose, and to reserve the appropriate number of shares of Common Stock for issuance upon such conversion.

 

(e)            No Closing of Transfer Books. The Corporation shall not close its books against the transfer of shares of Preferred Stock in any manner that would interfere with the timely conversion of any shares of Preferred Stock.

 

7.            Adjustments.

 

(a)            Adjustments to the Conversion Price. Except as provided in Section A.7(b) and except in the case of an event described in Section A.7(c), if and whenever after the date this Fifth Amended and Restated Certificate of Incorporation is first filed with the Secretary of State of Delaware (the “Filing Date”) the Corporation shall issue or sell, or is, in accordance with this Section A.7(a), deemed to have issued or sold, any shares of Common Stock for a consideration per share less than the applicable Conversion Price of a series of Preferred Stock in effect immediately prior to such issuance or sale, then, upon such issuance or sale (or deemed issuance or sale), such Conversion Price shall be reduced to the price determined by dividing (i) the sum of (A) the Common Stock Deemed Outstanding (as defined below) immediately prior to such issuance or sale (or deemed issuance or sale) multiplied by the applicable Conversion Price then in effect and (B) the consideration, if any, received by the Corporation upon such issuance or sale (or deemed issuance or sale) by (ii) the Common Stock Deemed Outstanding immediately after such issuance or sale (or deemed issuance or sale).

 

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For purposes of this Section A.7(a), the following shall also be applicable:

 

(i)            Issuance of Rights or Options. If the Corporation shall, at any time after the Filing Date, in any manner grant (whether directly or by assumption in a merger or otherwise) any warrants or other rights to subscribe for or to purchase, or any options for the purchase of, Common Stock or any stock or security convertible into or exchangeable for Common Stock (such warrants, rights or options being called “Options” and such convertible or exchangeable stock or securities being called “Convertible Securities”), in each case for consideration per share (determined as provided in this paragraph and in Section A.7(a)(vi)) less than the applicable Conversion Price then in effect, whether or not such Options or the right to convert or exchange any such Convertible Securities are immediately exercisable, then the total maximum number of shares of Common Stock issuable upon the exercise of such Options, or upon conversion or exchange of the total maximum amount of such Convertible Securities issuable upon exercise of such Options, shall be deemed to have been issued as of the date of granting of such Options, at a price per share equal to the amount determined by dividing (A) the total amount, if any, received or receivable by the Corporation as consideration for the granting of such Options, plus the minimum aggregate amount of additional consideration payable to the Corporation upon the exercise of all such Options, plus, in the case of such Options which relate to Convertible Securities, the minimum aggregate amount of additional consideration, if any, payable upon the issuance or sale of such Convertible Securities and upon the conversion or exchange thereof, by (B) the total maximum number of shares of Common Stock deemed to have been so issued. Except as otherwise provided in Section A.7(a)(iii), no adjustment of the Conversion Price of a series of Preferred Stock shall be made upon the actual issuance of such Common Stock or of such Convertible Securities upon exercise of such Options or upon the actual issuance of such Common Stock upon conversion or exchange of such Convertible Securities.

 

(ii)           Issuance of Convertible Securities. If the Corporation shall, at any time after the Filing Date, in any manner issue or sell any Convertible Securities for consideration per share (determined as provided in this paragraph and in Section A.7(a)(vi)) less than a Conversion Price then in effect, whether or not the rights to exchange or convert any such Convertible Securities are immediately exercisable, then the total maximum number of shares of Common Stock issuable upon conversion or exchange of all such Convertible Securities shall be deemed to have been issued as of the date of the issuance or sale of such Convertible Securities, at a price per share equal to the amount determined by dividing (A) the total amount, if any, received or receivable by the Corporation as consideration for the issuance or sale of such Convertible Securities, plus the minimum aggregate amount of additional consideration, if any, payable to the Corporation upon the conversion or exchange thereof, by (B) the total maximum number of shares of Common Stock deemed to have been so issued; provided, that (1) except as otherwise provided in Section A.7(a)(iii), no adjustment of the Conversion Price of a series of Preferred Stock shall be made upon the actual issuance of such Common Stock upon conversion or exchange of such Convertible Securities and (2) if any such issuance or sale of such Convertible Securities is made upon exercise of any Options to purchase any such Convertible Securities, no further adjustment of a Conversion Price shall be made by reason of such issuance or sale.

 

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(iii)          Change in Option Price or Conversion Rate. If there shall occur a change in (A) the maximum number of shares of Common Stock issuable in connection with any Option referred to in Section A.7(a)(i) or any Convertible Securities referred to in Section A.7(a)(i) or (ii), (B) the purchase price provided for in any Option referred to in Section A.7(a)(i), (C) the additional consideration, if any, payable upon the conversion or exchange of any Convertible Securities referred to in Section A.7(a)(i) or (ii) or (D) the rate at which Convertible Securities referred to in Section A.7(a)(i) or (ii) are convertible into or exchangeable for Common Stock (in each case, other than in connection with an event described in Section A.7(b)), then the applicable Conversion Price in effect at the time of such event shall be adjusted to the Conversion Price for such series of Preferred Stock that would have been in effect at such time had such Options or Convertible Securities that are still outstanding provided for such changed maximum number of shares, purchase price, additional consideration or conversion rate, as the case may be, at the time initially granted, issued or sold, but only if as a result of such adjustment the Conversion Price then in effect for such series of Preferred Stock is thereby reduced; and on the termination of any such Option or any such right to convert or exchange such Convertible Securities, the Conversion Price then in effect hereunder shall be increased to the Conversion Price that would have been in effect at the time of such termination had such Option or Convertible Securities, to the extent outstanding immediately prior to such termination (i.e., to the extent that fewer than the number of shares of Common Stock deemed to have been issued in connection with such Option or Convertible Securities were actually issued), never been issued or been issued at such higher price, as the case may be.

 

(iv)          Stock Dividends. If the Corporation, at any time or from time to time after the Filing Date, shall declare or make, or fix a record date for the determination of holders of Common Stock entitled to receive, a dividend or make any other distribution upon any stock of the Corporation payable in Common Stock, Options or Convertible Securities, any Common Stock, Options or Convertible Securities, as the case may be, issuable in payment of such dividend or distribution shall be deemed to have been issued or sold without consideration, and the Conversion Price will be adjusted pursuant to this Section A.7(a); provided, that no adjustment shall be made to the Conversion Price as a result of such dividend or distribution if the holders of the shares of Preferred Stock are entitled to, and do, receive such dividend or distribution in accordance with Section A.3; and, provided, further, that if any adjustment is made to the Conversion Price as a result of the declaration of a dividend and such dividend is not effected, the Conversion Price shall be appropriately readjusted to the Conversion Price in effect had such dividend not been declared.

 

(v)           Other Dividends and Distributions. If the Corporation, at any time or from time to time after the Filing Date, shall declare or make, or fix a record date for the determination of holders of Common Stock entitled to receive, a dividend or other distribution payable in securities or other property of the Corporation other than shares of Common Stock, then and in each such event provision shall be made so that the holders of the outstanding shares of Preferred Stock shall receive upon conversion thereof, in addition to the number of shares of Common Stock receivable thereupon, the amount of such other securities of the Corporation or the value of such other property that they would have received had the Preferred Stock been converted into Common Stock on the date of such event and had such holders thereafter, during the period from the date of such event to and including the conversion date, retained such securities or other property receivable by them during such period giving application to all adjustments called for during such period under Section A.7 with respect to the rights of the holders of the outstanding shares of Preferred Stock; and, provided, further, however, that no such adjustment shall be made if the holders of such series of Preferred Stock simultaneously receive a dividend or other distribution of such securities or other property in an amount equal to the amount of such securities or other property as they would have received if all outstanding shares of Preferred Stock had been converted into Common Stock on the date of such event.

 

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(vi)          Consideration for Stock. If the Corporation, at any time or from time to time after the Filing Date, shall issue or sell, or is deemed to have issued or sold, any shares of Common Stock for cash, the consideration received therefor shall be deemed to be the amount received or to be received by the Corporation therefor (determined with respect to deemed issuances and sales in connection with Options and Convertible Securities in accordance with clause (A) of Section A.7(a)(i) or Section A.7(a)(ii), as appropriate) as determined in good faith by the Board of Directors of the Corporation and the holders of not less than a Majority Interest. In case any shares of Common Stock shall be issued or sold, or deemed issued or sold, for a consideration other than cash, the amount of the consideration other than cash received by the Corporation shall be deemed to be the fair value of such consideration received or to be received by the Corporation (determined with respect to deemed issuances and sales in connection with Options and Convertible Securities in accordance with clause (A) of Section A.7(a)(i) or Section A.7(a)(ii), as appropriate) as determined in good faith by the Board of Directors of the Corporation and the holders of not less than a Majority Interest. In case any Options shall be issued in connection with the issuance and sale of other securities of the Corporation, together comprising one integral transaction in which no specific consideration is allocated to such Options by the parties thereto, such Options shall be deemed to have been issued for such consideration as determined in good faith by the Board of Directors of the Corporation and the holders of not less than a Majority Interest. Anything herein to the contrary notwithstanding, if in any case described in this Section A.7(a)(vi) the Corporation and the holders of a Majority Interest are unable to reach agreement as to the value of such consideration, then the value thereof will be determined by an independent appraisal by a mutually agreed to investment banker, the fees of which shall be paid by the Corporation.

 

(vii)         Record Date. In case the Corporation shall take a record of the holders of its Common Stock for the purpose of entitling them (A) to receive a dividend or other distribution payable in Common Stock, Options or Convertible Securities or (B) to subscribe for or purchase Common Stock, Options or Convertible Securities, then such record date shall be deemed to be the date of the issuance or sale of the shares of Common Stock deemed to have been issued or sold upon the declaration of such dividend or the making of such other distribution or the date of the granting of such right of subscription or purchase, as the case may be.

 

(viii)        Treasury Shares. The number of shares of Common Stock outstanding at any given time shall not include shares owned or held by or for the account of the Corporation; provided, that the disposition of any such shares shall be considered an issuance or sale of Common Stock for the purpose of this Section A.7.

 

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(ix)          Other Issuances or Sales. In calculating any adjustment to a Conversion Price pursuant to this Section A.7(a), any Options or Convertible Securities that provide, as of the effective date of such adjustment, for the issuance upon exercise or conversion thereof of an indeterminable number of shares of Common Stock shall (together with the shares of Common Stock issuable upon exercise or conversion thereof) be disregarded; provided, that at such time as the number of shares of Common Stock issuable upon exercise or conversion of such Options or Convertible Securities becomes determinable, such Conversion Price shall be adjusted as provided in Section A.7(a)(iii) above.

 

(x)           Common Stock Deemed Outstanding. For purposes of this Section A.7, the term “Common Stock Deemed Outstanding” shall mean, at any time, the sum of (A) the number of shares of Common Stock outstanding immediately prior to the Filing Date (including for this purpose all shares of Common Stock issuable upon exercise or conversion of any vested Options or Convertible Securities outstanding and exercisable immediately prior to the Filing Date), plus (B) the number of shares of Common Stock issued or sold (or deemed issued or sold) after the Filing Date (including for this purpose all shares of Common Stock issuable upon exercise or conversion of any vested Options or Convertible Securities outstanding and exercisable immediately prior to the Filing Date).

 

(b)            Certain Issues of Common Stock Excepted. Anything herein to the contrary notwithstanding, the Corporation shall not be required to make any adjustment of the Conversion Price of any series of Preferred Stock in the case of the issuance from and after the Filing Date of (i) shares of Common Stock upon conversion of shares of Preferred Stock, (ii) shares of Common Stock or options therefor to directors, officers, employees or consultants of the Corporation in connection with their service as directors of the Corporation, their employment by the Corporation or their retention as consultants by the Corporation, in each case authorized by the Board of Directors, including at least two of the Preferred Directors, and issued pursuant to any equity incentive plans approved by the Board of Directors, (iii) as part of the consideration payable in the acquisition of another entity by the Corporation by merger, purchase of all or substantially all of the assets of such entity, stock purchase or other reorganization of such entity, in each case as authorized by the Board of Directors, including at least two of the Preferred Directors, (iv) to a bank or other financial institution (not to exceed two percent (2%) of all outstanding securities) to secure a lending or equipment leasing transaction, in each case as authorized by the Board of Directors, including at least two of the Preferred Directors, (v) to a business partner, government laboratory or university to advance strategic business objectives, as authorized by the Board of Directors, including at least two of the Preferred Directors, and (vi) with respect to an adjustment to the Conversion Price of a particular series of Preferred Stock, if the Corporation receives a waiver of such adjustment from the holders of a majority of the shares of such series of Preferred Stock (“Excluded Shares”).

 

(c)            Subdivision or Combination of Common Stock. In case the Corporation shall at any time after the Filing Date subdivide its outstanding shares of Common Stock into a greater number of shares (by any stock split, stock dividend or otherwise), the Conversion Price of each series of Preferred Stock in effect immediately prior to such subdivision shall be proportionately reduced, and, conversely, in case the Corporation shall at any time after the Filing Date combine its outstanding shares of Common Stock into a smaller number of shares (by any reverse stock split or otherwise), the Conversion Price of each series of Preferred Stock in effect immediately prior to such combination shall be proportionately increased. In the case of any such subdivision, no further adjustment shall be made pursuant to Section A.7(a)(iv) by reason thereof.

 

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(d)            Reorganization or Reclassification. If any capital reorganization or reclassification of the capital stock of the Corporation shall be effected in such a way that holders of Common Stock shall be entitled to receive stock, securities or assets with respect to or in exchange for Common Stock, then, as a condition of such reorganization or reclassification, lawful and adequate provisions shall be made whereby each holder of a share or shares of Preferred Stock shall thereupon have the right to receive, upon the basis and upon the terms and conditions specified herein and in lieu of the shares of Common Stock immediately theretofore receivable upon the conversion of such share or shares of Preferred Stock, as the case may be, such shares of stock, securities or assets as may be issued or payable with respect to or in exchange for a number of outstanding shares of such Common Stock equal to the number of shares of such Common Stock immediately theretofore receivable upon such conversion had such reorganization or reclassification not taken place, and in any such case appropriate provisions shall be made with respect to the rights and interests of such holder to the end that the provisions hereof (including, without limitation, provisions for adjustments of the Conversion Price) shall thereafter be applicable, as nearly as may be, in relation to any shares of stock, securities or assets thereafter deliverable upon the exercise of such conversion rights.

 

8.            Covenants.

 

(a)            For so long as at least 2,412,110 shares of Preferred Stock remain outstanding (such amount to be adjusted for any stock splits, dividends, combinations, recapitalizations and the like) as of the applicable date, the Corporation shall not (in any case, by merger, consolidation, operation of law or otherwise), without first having obtained the affirmative vote or written consent of the holders of not less than a Majority Interest:

 

(i)            declare or pay any dividends other than dividends on the Preferred Stock as provided in Section A.3 or make any distributions of cash, property or securities of the Corporation in respect of its capital stock, or apply any of its assets to the redemption, retirement, purchase or other acquisition of its capital stock, directly or indirectly, through subsidiaries or otherwise, except for (A) the redemption of Preferred Stock pursuant to and as provided in this Fifth Amended and Restated Certificate of Incorporation, or (B) the repurchase of the Excluded Shares described in Section A.7(b)(ii) above upon termination of employment of the holder of such Excluded Shares, and approved by the Board, including at least two of the Preferred Directors;

 

(ii)           reclassify any capital stock in a manner that adversely affects the designations, preferences, powers and/or the relative, participating, optional or other special rights, or the restrictions provided for the benefit of, the Preferred Stock;

 

(iii)          authorize or issue, or obligate itself to issue, any equity security or debt security convertible into an equity security of the Corporation or create (by reclassification or otherwise) any new class or series of shares having rights, preferences or privileges senior to or on a parity with the Preferred Stock), or permit any subsidiary of the Corporation to issue such securities to any person or entity other than the Corporation or create such new class or series of shares;

 

(iv)          amend, waive, alter or repeal (whether by merger, consolidation, operation of law, or otherwise) any provision of, or add any provision to, (A) this Fifth Amended and Restated Certificate of Incorporation (including, without limitation, increasing the total number of shares of Preferred Stock that the Corporation shall have the authority to issue) or (B) the By-laws of the Corporation as in effect on the Closing Date, in a manner that alters or changes the right, preferences or privileges of the Preferred Stock or is otherwise adverse to the Preferred Stock;

 

(v)           effect any Liquidation Event, or any other event described in Section A.4(f) hereof;

 

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(vi)          effect the sale, transfer or license of all or substantially all of the assets of the Corporation or any subsidiary of the Corporation to any person or entity other than the Corporation or a wholly-owned subsidiary of the Corporation;

 

(vii)         increase or decrease to the authorized size of the Board of Directors;

 

(viii)        take any action that results in the appointment or removal of the Chief Executive Officer;

 

(ix)          take any action that results in a public offering of any shares of Common Stock;

 

(x)           incur any indebtedness (including by issuance of any debt security), except for indebtedness that does not exceed $250,000 in the aggregate;

 

(xi)          acquire any business with a value in excess of $2,000,000;

 

(xii)         cause the Corporation to have any non-wholly owned subsidiaries or spin out or sell any subsidiary of the Corporation or any entity created by the Corporation;

 

(xiii)        change the principal business of the Corporation, enter new lines of business or exit any current line of business, or permits any subsidiary to take such action;

 

(xiv)        take any other action not described in Section A.8(a)(i)-(xiii) if such action alters or changes the rights, preferences or privileges of the Preferred Stock; or

 

(xv)         enter into any agreement to do any of the foregoing that is not expressly made conditional on obtaining the affirmative vote or written consent of the holders of not less than a Majority Interest.

 

(b)            For so long as at least 828,078 shares of Series A Preferred Stock remain outstanding (such amount to be adjusted for any stock splits, dividends, combinations, recapitalizations and the like) as of the applicable date, the Corporation shall not (in any case, by merger, consolidation, operation of law or otherwise), without first having obtained the affirmative vote or written consent of the holders of a majority of the Series A Preferred Stock then outstanding:

 

(i)            alter or change the rights, preferences or privileges of the Series A Preferred Stock in a manner that adversely alters or changes the rights, preferences or privileges of the Series A Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be; or

 

(ii)           amend, waive, alter or repeal (whether by merger, consolidation, operation of law, or otherwise) any provision of, or add any provision to, this Fifth Amended and Restated Certificate of Incorporation (including, without limitation, increasing or decreasing the total number of shares of Series A Preferred Stock that the Corporation shall have the authority to issue) or the By-laws of the Corporation as in effect on the Closing Date in a manner that adversely alters or changes the rights, preferences or privileges of the Series A Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be.

 

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(c)            For so long as at least 444,198 shares of Series B Preferred Stock remain outstanding (such amount to be adjusted for any stock splits, dividends, combinations, recapitalizations and the like) as of the applicable date, the Corporation shall not (in any case, by merger, consolidation, operation of law or otherwise), without first having obtained the affirmative vote or written consent of the holders of not less than a majority of the Series B Preferred Stock then outstanding:

 

(i)            alter or change the rights, preferences or privileges of the Series B Preferred Stock in a manner that adversely alters or changes the rights, preferences or privileges of the Series B Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be; or

 

(ii)           amend, waive, alter or repeal (whether by merger, consolidation, operation of law, or otherwise) any provision of, or add any provision to, this Fifth Amended and Restated Certificate of Incorporation (including, without limitation, increasing or decreasing the total number of shares of Series B Preferred Stock that the Corporation shall have the authority to issue) or the By-laws of the Corporation as in effect on the Closing Date in a manner that adversely alters or changes the rights, preferences or privileges of the Series B Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be.

 

(d)            For so long as at least 376,806 shares of Series C Preferred Stock remain outstanding (such amount to be adjusted for any stock splits, dividends, combinations, recapitalizations and the like) as of the applicable date, the Corporation shall not (in any case, by merger, consolidation, operation of law or otherwise), without first having obtained the affirmative vote or written consent of the holders of not less than sixty percent (60%) of the Series C Preferred Stock then outstanding:

 

(i)            alter or change the rights, preferences or privileges of the Series C Preferred Stock in a manner that adversely alters or changes the rights, preferences or privileges of the Series C Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be; or

 

(ii)           amend, waive, alter or repeal (whether by merger, consolidation, operation of law, or otherwise) any provision of, or add any provision to, this Fifth Amended and Restated Certificate of Incorporation (including, without limitation, increasing or decreasing the total number of shares of Series C Preferred Stock that the Corporation shall have the authority to issue) or the By-laws of the Corporation as in effect on the Closing Date in a manner that adversely alters or changes the rights, preferences or privileges of the Series C Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be.

 

(e)            For so long as at least 425,901 shares of Series D Preferred Stock remain outstanding (such amount to be adjusted for any stock splits, dividends, combinations, recapitalizations and the like) as of the applicable date, the Corporation shall not (in any case, by merger, consolidation, operation of law or otherwise), without first having obtained the affirmative vote or written consent of the holders of not less than sixty percent (60%) of the Series D Preferred Stock then outstanding:

 

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(i)            alter or change the rights, preferences or privileges of the Series D Preferred Stock in a manner that adversely alters or changes the rights, preferences or privileges of the Series D Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be; or

 

(ii)           amend, waive, alter or repeal (whether by merger, consolidation, operation of law, or otherwise) any provision of, or add any provision to, this Fifth Amended and Restated Certificate of Incorporation (including, without limitation, increasing or decreasing the total number of shares of Series D Preferred Stock that the Corporation shall have the authority to issue) or the By-laws of the Corporation as in effect on the Closing Date in a manner that adversely alters or changes the rights, preferences or privileges of the Series D Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be.

 

(f)            For so long as at least 278,219 shares of Series E Preferred Stock remain outstanding (such amount to be adjusted for any stock splits, dividends, combinations, recapitalizations and the like) as of the applicable date, the Corporation shall not (in any case, by merger, consolidation, operation of law or otherwise), without first having obtained the affirmative vote or written consent of the holders of not less than a majority of the Series E Preferred Stock then outstanding:

 

(i)            alter or change the rights, preferences or privileges of the Series E Preferred Stock in a manner that adversely alters or changes the rights, preferences or privileges of the Series E Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be;

 

(ii)           amend, waive, alter or repeal (whether by merger, consolidation, operation of law, or otherwise) any provision of, or add any provision to, this Fifth Amended and Restated Certificate of Incorporation or the By-laws of the Corporation as in effect on the Closing Date in a manner that adversely alters or changes the rights, preferences or privileges of the Series E Preferred Stock, unless the rights, preferences or privileges of each series of Preferred Stock are similarly and proportionally altered, changed, amended or terminated, as the case may be;

 

(iii)          increase or decrease the total number of shares of Series E Preferred Stock that the Corporation shall have the authority to issue;

 

(iv)          purchase or redeem (or permit any subsidiary to redeem) or pay or declare any dividend or make any distribution on, any shares of capital stock of the Corporation other than (i) dividends or other distributions payable on the Common Stock solely in the form of additional shares of Common Stock and (ii) repurchases of any Common Stock from former employees, officers, directors, consultants or other persons who performed services for the Corporation or any subsidiary in connection with the cessation of employment or service at a price no greater than the applicable price of such shares; or

 

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(v)           amend, waive, alter or repeal (whether by merger, consolidation, operation of law, or otherwise) the following sections of this Fifth Amended and Restated Certificate of Incorporation in a manner that adversely alters or changes the rights, preferences of privileges of the Series E Preferred Stock: Section A.2(c), Section A.3(a), Section A.4(a), Section A.4(e), Section A.4(f), Section A.4(g), Section A.4(h), Section A.4(i), Section A.5(a), Section A.5(b), Section A.5(c), Section A.6(a), Section A.6(b), Section A.7 or this Section A.8(f). For the avoidance of doubt, the authorization, creation or issuance of any equity security (including, any security convertible into or exercisable into any equity security) having rights, preferences or privileges which are senior to or on parity with any of the rights, preferences or privileges of the Series E Preferred Stock shall not in and of itself, be deemed to adversely affect the holders of Series E Preferred Stock for purposes of this Section A.8(f).

 

Any such act or transaction entered into without such consent or vote shall be null and void ab initio, and of no force or effect. Further, the Corporation shall not, by amendment, alteration or repeal of this Fifth Amended and Restated Certificate of Incorporation (whether by merger, consolidation, operation of law, or otherwise) or through any Liquidation Event, any event described in Section A.4(f) hereof, or any other reorganization, recapitalization, transfer of assets, consolidation, merger, dissolution, issue or sale of securities, agreement or any other voluntary action, avoid or seek to avoid the observance or performance of any of the terms to be observed or performed hereunder by the Corporation and shall at all times in good faith assist in the carrying out of all the provisions of this Article IV and in the taking of all such action as may be necessary or appropriate in order to protect the rights of the holders of the Preferred Stock against impairment.

 

9.            Notice; Adjustments; Waivers.

 

(a)            Liquidation Events, Etc. In the event (i) the Corporation establishes a record date to determine the holders of any class of securities who are entitled to receive any dividend or other distribution or who are entitled to vote at a meeting (or by written consent) in connection with any of the transactions identified in clause (ii) hereof, or (ii) any Liquidation Event, event deemed a Liquidation Event pursuant to Section A.4(f) hereof, QPO or any other public offering becomes reasonably likely to occur, the Corporation shall mail or cause to be mailed by first class mail (postage prepaid) to each holder of Preferred Stock at least thirty (30) days prior to such record date specified therein or the expected effective date of any such transaction, whichever is earlier, a notice specifying (A) the date of such record date for the purpose of such dividend or distribution or meeting or consent and a description of such dividend or distribution or the action to be taken at such meeting or by such consent, (B) the date on which any such Liquidation Event, event deemed a Liquidation Event pursuant to Section A.4(f) hereof, QPO or other public offering is expected to become effective, and (C) the date on which the books of the Corporation shall close or a record shall be taken with respect to any such event. Such notice shall be accompanied by a certificate prepared by the chief financial officer of the Corporation describing in reasonable detail (1) the facts of such transaction, (2) the amount(s) per share of Preferred Stock or Common Stock each holder of Preferred Stock would receive pursuant to the applicable provisions of this Fifth Amended and Restated Certificate of Incorporation, and (3) the facts upon which such amounts were determined.

 

(b)            Adjustments; Calculations. Upon the occurrence of each adjustment or readjustment of the Conversion Price of a series of Preferred Stock pursuant to Section A.7, the Corporation at its expense shall promptly compute such adjustment or readjustment in accordance with the terms hereof and prepare and furnish to each holder of such series of Preferred Stock a certificate setting forth in reasonable detail (i) such adjustment or readjustment, (ii) the applicable Conversion Price before and after such adjustment or readjustment, and (iii) the number of shares of Common Stock and the amount, if any, of other property which at the time would be received upon the conversion of such holder’s shares of such series of Preferred Stock. All such calculations shall be made to the nearest cent or to the nearest one hundredth (1/100) of a share as the case may be.

 

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(c)            Waiver of Notice. The holder or holders of a Majority Interest may, at any time upon written notice to the Corporation, waive any notice or certificate delivery provisions specified herein for the benefit of such holders, and any such waiver shall be binding upon all holders of such securities.

 

(d)            Other Waivers. Subject to the provisions of Section 8(f)(v) and any other provision hereof requiring the consent of holders of a particular series of Preferred Stock, the holder or holders of a Majority Interest may, at any time upon written notice to the Corporation, waive compliance by the Corporation with any term or provision herein, provided that any such waiver shall be binding upon all holders of Preferred Stock and their respective transferees so long as any such waiver does not affect any holder of outstanding shares of Preferred Stock in a manner materially different than any other holder. Notwithstanding anything to the contrary contained within this Fifth Amended and Restated Certificate of Incorporation, no waiver of the adjustment provisions contained in Section A.7 shall be effective with respect to the Series E Preferred Stock without the written election of a Series E Majority.

 

10.            No Reissuance of Preferred Stock. No share or shares of Preferred Stock acquired by the Corporation by reason of redemption, purchase, conversion or otherwise shall be reissued, and all such shares shall be canceled, retired and eliminated from the shares which the Corporation shall be authorized to issue.

 

11.            Contractual Rights of Holders. The various provisions set forth herein for the benefit of the holders of the Preferred Stock shall be deemed contract rights enforceable by them, including, without limitation, one or more actions for specific performance.

 

B.            COMMON STOCK

 

1.            Voting.

 

(a)            Election of Directors. The holders of Common Stock voting together as a single class shall be entitled to elect three (3) Directors of the Corporation. Such Directors shall be elected by a plurality vote, with the elected candidates being the candidates receiving the greatest number of affirmative votes (with each holder entitled to cast one vote for or against each candidate with respect to each share held by such holder), with votes cast against such candidates and votes withheld having no legal effect. The election of such Directors shall occur at the annual meeting of holders of capital stock or at any special meeting called and held in accordance with the By-laws of the Corporation, or by consent in lieu thereof in accordance with this Fifth Amended and Restated Certificate of Incorporation and applicable law. The holders of record of the shares of Common Stock and of any other class or series of voting stock (including the Preferred Stock), exclusively and voting together as a single class, shall be entitled to elect the balance of the total number of directors of the Corporation.

 

(b)            Voting Generally. Except as otherwise expressly provided herein or required by law, each holder of outstanding shares of Common Stock shall be entitled to one (1) vote in respect of each share of Common Stock held thereby of record on the books of the Corporation for the election of directors and on all matters submitted to a vote of stockholders of the Corporation. Notwithstanding the provisions of Section 242(b)(2) of the Delaware General Corporation Law, the number of authorized shares of Common Stock may be increased or decreased (but not below the number of shares thereof then outstanding) by the affirmative vote of a majority of the outstanding shares of Common Stock and Preferred Stock voting together as a single class. For the avoidance of doubt, each holder of Preferred Stock shall be entitled to one (1) vote per share of Common Stock into which it is convertible on the applicable date on all matters submitted to a vote of holders of Common Stock as a class (including, without limitation, pursuant to Section B.1(a) above or this Section B.1(b)).

 

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2.            Dividends. Subject to the payment in full of all preferential dividends to which the holders of the Preferred Stock are entitled hereunder, the holders of Common Stock shall be entitled to receive dividends out of funds legally available therefor at such times and in such amounts as the Board of Directors may determine in its sole discretion, with holders of Series A Preferred Stock, Series B Preferred Stock, Series C Preferred Stock, Series D Preferred Stock, Series E Preferred Stock and Common Stock sharing pari passu in such dividends, as contemplated by Section A.3.

 

ARTICLE V

 

In furtherance of and not in limitation of powers conferred by statute, it is further provided:

 

1.            Election of Directors need not be by written ballot unless the By-laws of the Corporation so provide.

 

2.            Except as provided in Article IV, Section A.8, the Board of Directors is expressly authorized to adopt, amend or repeal the By-laws of the Corporation to the extent specified therein.

 

ARTICLE VI

 

Meetings of stockholders may be held within or without the State of Delaware, as the By-laws may provide.

 

ARTICLE VII

 

To the extent permitted by law, the books of the Corporation may be kept outside the State of Delaware at such place or places as may be designated in the By-laws of the Corporation or from time to time by its Board of Directors.

 

ARTICLE VIII

 

A Director of the Corporation shall not be personally liable to the Corporation or its stockholders for monetary damages for breach of fiduciary duty as a Director of the Corporation, except for liability (a) for any breach of the Director’s duty of loyalty to the Corporation or its stockholders, (b) for acts or omissions not in good faith or which involve intentional misconduct or a knowing violation of law, (c) under Section 174 of the Delaware General Corporation Law, or (d) for any transaction from which the Director derived an improper personal benefit. If the Delaware General Corporation Law is amended after the effective date of this Fifth Amended and Restated Certificate of Incorporation to authorize corporate action further eliminating or limiting the personal liability of Directors, then the liability of a Director of the Corporation shall be eliminated or limited to the fullest extent permitted by the General Corporation Law of the State of Delaware.

 

Any repeal or modification of this Article VIII, Article IX or Article XI by the stockholders of the Corporation or by an amendment to the Delaware General Corporation Law shall not adversely affect any right or protection with respect to any acts or omissions occurring before such repeal or modification of a person serving as a Director prior to or at the time of such repeal or modification.

 

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ARTICLE IX

 

The Corporation renounces any interest or expectancy of the Corporation in, or in being offered an opportunity to participate in, any Excluded Opportunity. An “Excluded Opportunity” is any matter, transaction or interest that is presented to, or acquired, created or developed by, or which otherwise comes into the possession of, (i) any Director of the Corporation who is not an employee of the Corporation or any of its subsidiaries, or (ii) any holder of Preferred Stock or any partner, member, director, stockholder, employee or agent of any such holder, other than someone who is an employee of the Corporation or any of its subsidiaries (collectively, “Covered Persons”), unless such matter, transaction or interest is presented to, or acquired, created or developed by, or otherwise comes into the possession of, a Covered Person expressly and solely in such Covered Person’s capacity as a Director of the Corporation.

 

ARTICLE X

 

Except as otherwise provided herein, the Corporation reserves the right to amend, alter, change or repeal any provision contained in this Fifth Amended and Restated Certificate of Incorporation, in the manner now or hereafter prescribed by statute, and all rights conferred upon stockholders herein are granted subject to this reservation.

 

ARTICLE XI

 

To the fullest extent permitted by applicable law, this Company is authorized to provide indemnification of (and advancement of expenses to) directors, officers, employees and other agents of this Company (and any other persons to which Delaware law permits this Company to provide indemnification), through Bylaw provisions, agreements with any such director, officer, employee or other agent or other person, vote of stockholders or disinterested directors, or otherwise, in excess of the indemnification and advancement otherwise permitted by the Delaware General Corporation Law, subject only to limits created by applicable Delaware law (statutory or nonstatutory), with respect to actions for breach of duty to a corporation, its stockholders and others.

 

ARTICLE XII

 

Unless the Corporation consents in writing to the selection of an alternative forum, the Court of Chancery in the State of Delaware shall be the sole and exclusive forum for any stockholder (including a beneficial owner) to bring (i) any derivative action or proceeding brought on behalf of the Corporation, (ii) any action asserting a claim of breach of fiduciary duty owed by any director, officer or other employee of the Corporation to the Corporation or the Corporation’s stockholders, (iii) any action asserting a claim against the Corporation, its directors, officers or employees arising pursuant to any provision of the Delaware General Corporation Law or the Corporation’s certificate of incorporation or By-laws or (iv) any action asserting a claim against the Corporation, its directors, officers or employees governed by the internal affairs doctrine. If any provision or provisions of this Article Twelfth shall be held to be invalid, illegal or unenforceable as applied to any person or entity or circumstance for any reason whatsoever, then, to the fullest extent permitted by law, the validity, legality and enforceability of such provisions in any other circumstance and of the remaining provisions of this Article Twelfth (including, without limitation, each portion of any sentence of this Article Twelfth containing any such provision held to be invalid, illegal or unenforceable that is not itself held to be invalid, illegal or unenforceable) and the application of such provision to other persons or entities and circumstances shall not in any way be affected or impaired thereby.

 

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Exhibit 3.2

 

CERTIFICATE OF AMENDMENT TO
FIFTH AMENDED AND RESTATED

CERTIFICATE OF INCORPORATION
OF
908 DEVICES INC.

 

908 Devices Inc. (the “Corporation”), a corporation organized and existing under and by virtue of the General Corporation Law of the State of Delaware (the “DGCL”), does hereby certify:

 

1.            Pursuant to Section 242 of the DGCL, this Certificate of Amendment to the Fifth Amended and Restated Certificate of Incorporation (this “Amendment”) amends the provisions of the Fifth Amended and Restated Certificate of Incorporation of the Corporation (the “Certificate”).

 

2.            This Amendment has been approved and duly adopted by the Corporation’s Board of Directors and written consent of the stockholders has been given in accordance with the provisions of Sections 228 and 242 of the DGCL, and the provisions of the Certificate.

 

3.            The Certificate is hereby amended as follows:

 

(a) The first paragraph of Article IV is hereby amended and restated in its entirety to read as set forth below:

 

“The total number of shares of capital stock which the Corporation shall have authority to issue is 61,133,507, of which (i) 24,156,877 shares shall be preferred stock, par value $0.001 per share (the “Preferred Stock”), and (ii) 36,976,630 shares shall be common stock, par value $0.001 per share (the “Common Stock”).”

 

(b) The fifth sentence of Section A.1 of Article IV is hereby amended and restated in its entirety to read as set forth below:

 

“A total of 2,817,965 shares of the Corporation’s Preferred Stock shall be designated as a series known as Series E Participating Convertible Preferred Stock, par value $0.001 per share (the “Series E Preferred Stock”).”

 

* - * - * - *

 

 

 

IN WITNESS WHEREOF, the undersigned authorized officer of the Corporation, has executed this Certificate of Amendment to Fifth Amended and Restated Certificate of Incorporation as of August 29, 2019.

 

  908 DEVICES INC.
   
   
  /S/ Kevin Knopp
  Name: Kevin Knopp
  Title:   President

 

 

Exhibit 3.4

 

BY-LAWS

 

of

 

908 DEVICES INC.

 

(the “Corporation”)

 

1. Stockholders

 

(a)            Annual Meeting. The annual meeting of stockholders shall be held for the election of directors each year at such place, date and time as shall be designated by the Board of Directors. Any other proper business may be transacted at the annual meeting. If no date for the annual meeting is established or said meeting is not held on the date established as provided above, a special meeting in lieu thereof may be held or there may be action by written consent of the stockholders on matters to be voted on at the annual meeting, and such special meeting or written consent shall have for the purposes of these By-laws or otherwise all the force and effect of an annual meeting.

 

(b)            Special Meetings. Special meetings of stockholders may be called by the Chief Executive Officer, if one is elected, or, if there is no Chief Executive Officer, a President, or by the Board of Directors, but such special meetings may not be called by any other person or persons. The call for the meeting shall state the place, date, hour and purposes of the meeting. Only the purposes specified in the notice of special meeting shall be considered or dealt with at such special meeting.

 

(c)            Notice of Meetings. Whenever stockholders are required or permitted to take any action at a meeting, a notice stating the place, if any, date and hour of the meeting, the means of remote communications, if any, by which stockholders and proxyholders may be deemed to be present and vote at such meeting, and, in the case of a special meeting, the purpose or purposes of the meeting, shall be given by the Secretary (or other person authorized by these By-laws or by law) not less than ten (10) nor more than sixty (60) days before the meeting to each stockholder entitled to vote thereat and to each stockholder who, under the Certificate of Incorporation or under these By-laws is entitled to such notice. If mailed, notice is given when deposited in the mail, postage prepaid, directed to such stockholder at such stockholder’s address as it appears in the records of the Corporation. Without limiting the manner by which notice otherwise may be effectively given to stockholders, any notice to stockholders may be given by electronic transmission in the manner provided in Section 232 of the Delaware General Corporation Law (the “DGCL”).

 

If a meeting is adjourned to another time or place, notice need not be given of the adjourned meeting if the time and place, if any, and the means of remote communications, if any, by which stockholders and proxyholders may be deemed to be present in person and vote at such adjourned meeting are announced at the meeting at which the adjournment is taken, except that if the adjournment is for more than thirty (30) days, or if after the adjournment a new record date is fixed for the adjourned meeting, notice of the adjourned meeting shall be given to each stockholder of record entitled to vote at the meeting.

 

 

 

(d)            Quorum. The holders of a majority in interest of all stock issued, outstanding and entitled to vote at a meeting, present in person or represented by proxy, shall constitute a quorum. Any meeting may be adjourned from time to time by a majority of the votes properly cast upon the question, whether or not a quorum is present. The stockholders present at a duly constituted meeting may continue to transact business until adjournment notwithstanding the withdrawal of enough stockholders to reduce the voting shares below a quorum.

 

(e)            Voting and Proxies. Except as otherwise provided by the Certificate of Incorporation or by law, each stockholder entitled to vote at any meeting of stockholders shall be entitled to one vote for each share of stock held by such stockholder which has voting power upon the matter in question. Each stockholder entitled to vote at a meeting of stockholders or to express consent or dissent to corporate action in writing without a meeting may authorize another person or persons to act for such stockholder by either written proxy or by a transmission permitted by Section 212(c) of the DGCL, but no proxy shall be voted or acted upon after three years from its date, unless the proxy provides for a longer period or is irrevocable and coupled with an interest. Proxies shall be filed with the Secretary of the meeting, or of any adjournment thereof. Except as otherwise limited therein, proxies shall entitle the persons authorized thereby to vote at any adjournment of such meeting.

 

(f)            Action at Meeting. When a quorum is present, any matter before the meeting shall be decided by vote of the holders of a majority of the shares of stock voting on such matter except where a larger vote is required by law, by the Certificate of Incorporation or by these By-laws. Any election of directors by stockholders shall be determined by a plurality of the votes cast, except where a larger vote is required by law, by the Certificate of Incorporation or by these By-laws. The Corporation shall not directly or indirectly vote any share of its own stock; provided, however, that the Corporation may vote shares which it holds in a fiduciary capacity to the extent permitted by law.

 

(g)            Presiding Officer. Meetings of stockholders shall be presided over by the Chairman of the Board, if one is elected, or in his or her absence, the Vice Chairman of the Board, if one is elected, or if neither is elected or in their absence, a President. The Board of Directors shall have the authority to appoint a temporary presiding officer to serve at any meeting of the stockholders if the Chairman of the Board, the Vice Chairman of the Board or a President is unable to do so for any reason.

 

(h)            Conduct of Meetings. The Board of Directors may adopt by resolution such rules and regulations for the conduct of the meeting of stockholders as it shall deem appropriate. Except to the extent inconsistent with such rules and regulations as adopted by the Board of Directors, the presiding officer of any meeting of stockholders shall have the right and authority to prescribe such rules, regulations and procedures and to do all such acts as, in the judgment of such chairman, are appropriate for the proper conduct of the meeting. Such rules, regulations or procedures, whether adopted by the Board of Directors or prescribed by the presiding officer of the meeting, may include, without limitation, the following: (i) the establishment of an agenda or order of business for the meeting; (ii) rules and procedures for maintaining order at the meeting and the safety of those present; (iii) limitations on attendance at or participation in the meeting to stockholders of record of the Corporation, their duly authorized and constituted proxies or such other persons as the chairman of the meeting shall determine; (iv) restrictions on entry to the meeting after the time fixed for the commencement thereof; and (v) limitations on the time allotted to questions or comments by participants. Unless and to the extent determined by the Board of Directors or the presiding officer of the meeting, meetings of stockholders shall not be required to be held in accordance with the rules of parliamentary procedure.

 

 

 

(i)             Action without a Meeting. Unless otherwise provided in the Certificate of Incorporation, any action required or permitted by law to be taken at any annual or special meeting of stockholders, may be taken without a meeting, without prior notice and without a vote, if a consent or consents in writing, setting forth the action so taken, shall be signed by the holders of outstanding stock having not less than the minimum number of votes that would be necessary to authorize or take such action at a meeting at which all shares entitled to vote thereon were present and voted and shall be delivered to the Corporation by delivery to its registered office, by hand or by certified mail, return receipt requested, or to the Corporation's principal place of business or to the officer of the Corporation having custody of the minute book. Every written consent shall bear the date of signature and no written consent shall be effective unless, within sixty (60) days of the earliest dated consent delivered pursuant to these By-laws, written consents signed by a sufficient number of stockholders entitled to take action are delivered to the Corporation in the manner set forth in these By-laws. Prompt notice of the taking of the corporate action without a meeting by less than unanimous written consent shall be given to those stockholders who have not consented in writing.

 

(j)             Stockholder Lists. The officer who has charge of the stock ledger of the Corporation shall prepare and make, at least ten (10) days before every meeting of stockholders, a complete list of the stockholders entitled to vote at the meeting, arranged in alphabetical order, and showing the address of each stockholder and the number of shares registered in the name of each stockholder. Nothing contained in this Section 1(j) shall require the Corporation to include electronic mail addresses or other electronic contact information on such list. Such list shall be open to the examination of any stockholder, for any purpose germane to the meeting, for a period of at least ten (10) days prior to the meeting in the manner provided by law. The list shall also be open to the examination of any stockholder during the whole time of the meeting as provided by law.

 

2. Directors

 

(a)            Powers. The business of the Corporation shall be managed by or under the direction of a Board of Directors who may exercise all the powers of the Corporation except as otherwise provided by law, by the Certificate of Incorporation or by these By-laws. In the event of a vacancy in the Board of Directors, the remaining directors, except as otherwise provided by law, may exercise the powers of the full Board until the vacancy is filled.

 

(b)            Number and Qualification. Unless otherwise provided in the Certificate of Incorporation or in these By-laws, the number of directors which shall constitute the whole board shall be determined from time to time by resolution of the Board of Directors. Directors need not be stockholders.

 

 

 

(c)            Vacancies; Reduction of Board. A majority of the directors then in office, although less than a quorum, or a sole remaining Director, may fill vacancies in the Board of Directors occurring for any reason and newly created directorships resulting from any increase in the authorized number of directors. In lieu of filling any vacancy, the Board of Directors may reduce the number of directors.

 

(d)            Tenure. Except as otherwise provided by law, by the Certificate of Incorporation or by these By-laws, directors shall hold office until their successors are elected and qualified or until their earlier resignation or removal. Any director may resign at any time upon notice given in writing or by electronic transmission to the Corporation. Such resignation shall be effective upon receipt unless it is specified to be effective at some other time or upon the happening of some other event.

 

(e)            Removal. To the extent permitted by law, a director may be removed from office with or without cause by vote of the holders of a majority of the shares of stock entitled to vote in the election of directors.

 

(f)            Meetings. Regular meetings of the Board of Directors may be held without notice at such time, date and place as the Board of Directors may from time to time determine. Special meetings of the Board of Directors may be called, orally or in writing, by the Chief Executive Officer, if one is elected, or, if there is no Chief Executive Officer, the President, or by two or more Directors, designating the time, date and place thereof. Directors may participate in meetings of the Board of Directors by means of conference telephone or other communications equipment by means of which all directors participating in the meeting can hear each other, and participation in a meeting in accordance herewith shall constitute presence in person at such meeting.

 

(g)            Notice of Meetings. Notice of the time, date and place of all special meetings of the Board of Directors shall be given to each director by the Secretary, or Assistant Secretary, or in case of the death, absence, incapacity or refusal of such persons, by the officer or one of the directors calling the meeting. Notice shall be given to each director in person, by telephone, or by facsimile, electronic mail or other form of electronic communications, sent to such director’s business or home address at least twenty-four (24) hours in advance of the meeting, or by written notice mailed to such director’s business or home address at least forty-eight (48) hours in advance of the meeting.

 

(h)            Quorum. At any meeting of the Board of Directors, a majority of the total number of directors shall constitute a quorum for the transaction of business. Less than a quorum may adjourn any meeting from time to time and the meeting may be held as adjourned without further notice.

 

(i)             Action at Meeting. At any meeting of the Board of Directors at which a quorum is present, unless otherwise provided in the following sentence, a majority of the directors present may take any action on behalf of the Board of Directors, unless a larger number is required by law, by the Certificate of Incorporation or by these By-laws. So long as there are two (2) or fewer Directors, any action to be taken by the Board of Directors shall require the approval of all Directors.

 

 

 

(j)            Action by Consent. Any action required or permitted to be taken at any meeting of the Board of Directors may be taken without a meeting if all members of the Board of Directors consent thereto in writing or by electronic transmission, and the writing or writings or electronic transmission or transmissions are filed with the records of the meetings of the Board of Directors. Such filing shall be in paper form if the minutes are maintained in paper form and shall be in electronic form if the minutes are maintained in electronic form.

 

(k)            Committees. The Board of Directors may, by resolution passed by a majority of the whole Board of Directors, establish one or more committees, each committee to consist of one or more directors. The Board of Directors may designate one or more directors as alternate members of any committee, who may replace any absent or disqualified member at any meeting of the committee. In the absence or disqualification of a member of a committee, the member or members thereof present at any meeting and not disqualified from voting, whether or not such member or members constitute a quorum, may unanimously appoint another member of the Board of Directors to act at the meeting in the place of any such absent or disqualified member.

 

Any such committee, to the extent permitted by law and to the extent provided in the resolution of the Board of Directors, shall have and may exercise all the powers and authority of the Board of Directors in the management of the business and affairs of the Corporation, and may authorize the seal of the Corporation to be affixed to all papers which may require it; but no such committee shall have the power or authority in reference to the following: (i) approving or adopting, or recommending to the stockholders, any action or matter expressly required by the DGCL to be submitted to stockholders for approval or (ii) adopting, amending or repealing any provision of these By-laws.

 

Except as the Board of Directors may otherwise determine, any such committee may make rules for the conduct of its business, but in the absence of such rules its business shall be conducted so far as possible in the same manner as is provided in these By-laws for the Board of Directors. All members of such committees shall hold their committee offices at the pleasure of the Board of Directors, and the Board may abolish any committee at any time.

 

3. Officers

 

(a)            Enumeration. The officers of the Corporation shall consist of one or more Presidents (who, if there is more than one, shall be referred to as Co-Presidents), a Treasurer, a Secretary, and such other officers, including, without limitation, a Chief Executive Officer and one or more Vice Presidents (including Executive Vice Presidents or Senior Vice Presidents), Assistant Vice Presidents, Assistant Treasurers and Assistant Secretaries, as the Board of Directors may determine. The Board of Directors may elect from among its members a Chairman of the Board and a Vice Chairman of the Board.

 

 

 

(b)            Election. The Presidents, Treasurer and Secretary shall be elected annually by the Board of Directors at their first meeting following the annual meeting of stockholders. Other officers may be chosen by the Board of Directors at such meeting or at any other meeting.

 

(c)            Qualification. No officer need be a stockholder or Director. Any two or more offices may be held by the same person. Any officer may be required by the Board of Directors to give bond for the faithful performance of such officer’s duties in such amount and with such sureties as the Board of Directors may determine.

 

(d)            Tenure. Except as otherwise provided by the Certificate of Incorporation or by these By-laws, each of the officers of the Corporation shall hold office until the first meeting of the Board of Directors following the next annual meeting of stockholders and until such officer’s successor is elected and qualified or until such officer’s earlier resignation or removal. Any officer may resign by delivering his or her written resignation to the Corporation, and such resignation shall be effective upon receipt unless it is specified to be effective at some other time or upon the happening of some other event.

 

(e)            Removal. The Board of Directors may remove any officer with or without cause by a vote of a majority of the directors then in office.

 

(f)             Vacancies. Any vacancy in any office may be filled for the unexpired portion of the term by the Board of Directors.

 

(g)            Chairman of the Board and Vice Chairman. Unless otherwise provided by the Board of Directors, the Chairman of the Board of Directors, if one is elected, shall preside, when present, at all meetings of the stockholders and the Board of Directors. The Chairman of the Board shall have such other powers and shall perform such duties as the Board of Directors may from time to time designate.

 

Unless otherwise provided by the Board of Directors, in the absence of the Chairman of the Board, the Vice Chairman of the Board, if one is elected, shall preside, when present, at all meetings of the stockholders and the Board of Directors. The Vice Chairman of the Board shall have such other powers and shall perform such duties as the Board of Directors may from time to time designate.

 

(h)            Chief Executive Officer. The Chief Executive Officer, if one is elected, shall have such powers and shall perform such duties as the Board of Directors may from time to time designate.

 

(i)            Presidents. The Presidents shall, subject to the direction of the Board of Directors, each have general supervision and control of the Corporation’s business and any action that would typically be taken by a President may be taken by any Co-President. If there is no Chairman of the Board or Vice Chairman of the Board, a President shall preside, when present, at all meetings of stockholders and the Board of Directors. The Presidents shall have such other powers and shall perform such duties as the Board of Directors may from time to time designate.

 

 

 

(j)             Vice Presidents and Assistant Vice Presidents. Any Vice President (including any Executive Vice President or Senior Vice President) and any Assistant Vice President shall have such powers and shall perform such duties as the Board of Directors may from time to time designate.

 

(k)            Treasurer and Assistant Treasurers. The Treasurer shall, subject to the direction of the Board of Directors, have general charge of the financial affairs of the Corporation and shall cause to be kept accurate books of account. The Treasurer shall have custody of all funds, securities, and valuable documents of the Corporation, except as the Board of Directors may otherwise provide. The Treasurer shall have such other powers and shall perform such duties as the Board of Directors may from time to time designate.

 

Any Assistant Treasurer shall have such powers and perform such duties as the Board of Directors may from time to time designate.

 

(l)            Secretary and Assistant Secretaries. The Secretary shall record the proceedings of all meetings of the stockholders and the Board of Directors (including committees of the Board) in books kept for that purpose. In the absence of the Secretary from any such meeting an Assistant Secretary, or if such person is absent, a temporary secretary chosen at the meeting, shall record the proceedings thereof. The Secretary shall have charge of the stock ledger (which may, however, be kept by any transfer or other agent of the Corporation) and shall have such other duties and powers as may be designated from time to time by the Board of Directors.

 

Any Assistant Secretary shall have such powers and perform such duties as the Board of Directors may from time to time designate.

 

(m)           Other Powers and Duties. Subject to these By-laws, each officer of the Corporation shall have in addition to the duties and powers specifically set forth in these By-laws, such duties and powers as are customarily incident to such officer’s office, and such duties and powers as may be designated from time to time by the Board of Directors.

 

4. Capital Stock

 

(a)            Certificates of Stock. Each stockholder shall be entitled to a certificate of the capital stock of the Corporation in such form as may from time to time be prescribed by the Board of Directors. Such certificate shall be signed by a President or a Vice President, and by the Treasurer or an Assistant Treasurer, or the Secretary or an Assistant Secretary. Such signatures may be a facsimile. In case any officer, transfer agent or registrar who has signed or whose facsimile signature has been placed on such certificate shall have ceased to be such officer, transfer agent or registrar before such certificate is issued, it may be issued by the Corporation with the same effect as if such person were such officer, transfer agent or registrar at the time of its issue. Every certificate for shares of stock which are subject to any restriction on transfer and every certificate issued when the Corporation is authorized to issue more than one class or series of stock shall contain such legend with respect thereto as is required by law. The Corporation shall be permitted to issue fractional shares.

 

 

 

(b)            Transfers. Subject to any restrictions on transfer, shares of stock may be transferred on the books of the Corporation by the surrender to the Corporation or its transfer agent of the certificate therefor properly endorsed or accompanied by a written assignment or power of attorney properly executed, with transfer stamps (if necessary) affixed, and with such proof of the authenticity of signature as the Corporation or its transfer agent may reasonably require.

 

(c)            Record Holders. Except as may otherwise be required by law, by the Certificate of Incorporation or by these By-laws, the Corporation shall be entitled to treat the record holder of stock as shown on its books as the owner of such stock for all purposes, including the payment of dividends and the right to vote with respect thereto, regardless of any transfer, pledge or other disposition of such stock, until the shares have been transferred on the books of the Corporation in accordance with the requirements of these By-laws.

 

It shall be the duty of each stockholder to notify the Corporation of such stockholder’s post office address.

 

(d)            Record Date. In order that the Corporation may determine the stockholders entitled to notice of or to vote at any meeting of stockholders or any adjournment thereof, or to consent to corporate action in writing without a meeting, or entitled to receive payment of any dividend or other distribution or allotment of any rights, or entitled to exercise any rights in respect of any change, conversion or exchange of stock or for the purpose of any other lawful action, the Board of Directors may fix, in advance, a record date, which shall not precede the date on which it is established, and which shall not be more than sixty (60) nor less than ten (10) days before the date of such meeting, more than ten (10) days after the date on which the record date for stockholder consent without a meeting is established, nor more than sixty (60) days prior to any other action. In such case only stockholders of record on such record date shall be so entitled notwithstanding any transfer of stock on the books of the Corporation after the record date.

 

If no record date is fixed, (i) the record date for determining stockholders entitled to notice of or to vote at a meeting of stockholders shall be at the close of business on the day next preceding the day on which notice is given, or, if notice is waived, at the close of business on the day next preceding the day on which the meeting is held, (ii) the record date for determining stockholders entitled to consent to corporate action in writing without a meeting, when no prior action by the Board of Directors is necessary, shall be the first date on which a signed written consent setting forth the action taken or proposed to be taken is delivered to the Corporation by delivery to its registered office in this state, to its principal place of business, or to an officer or agent of the Corporation having custody of the book in which proceedings of meetings of stockholders are recorded, and (iii) the record date for determining stockholders for any other purpose shall be at the close of business on the day on which the Board of Directors adopts the resolution relating thereto.

 

(e)            Lost Certificates. The Corporation may issue a new certificate of stock in the place of any certificate theretofore issued by it, alleged to have been lost, stolen or destroyed, and the Corporation may require the owner of the lost, stolen or destroyed certificate, or his legal representative, to give the Corporation a bond sufficient to indemnify it against any claim that may be made against it on account of the alleged loss, theft or destruction of any such certificate or the issuance of such new certificate.

 

 

 

5. Indemnification

 

(a) Definitions. For purposes of this Section 5:

 

(i)            “Corporate Status” describes the status of a person who is serving or has served (A) as a Director of the Corporation, (B) as an Officer of the Corporation, (C) as a Non-Officer Employee of the Corporation, or (D) as a director, partner, trustee, officer, employee or agent of any other corporation, partnership, limited liability company, joint venture, trust, employee benefit plan, foundation, association, organization or other legal entity for which such person is or was serving at the request of the Corporation. For purposes of this Section 5(a)(i), a Director, Officer or Non-Officer Employee of the Corporation who is serving or has served as a director, partner, trustee, officer, employee or agent of a Subsidiary shall be deemed to be serving at the request of the Corporation. Notwithstanding the foregoing, “Corporate Status” shall not include the status of a person who is serving or has served as a director, officer, employee or agent of a constituent corporation absorbed in a merger or consolidation transaction with the Corporation with respect to such person’s activities prior to said transaction, unless specifically authorized by the Board of Directors or the stockholders of the Corporation;

 

(ii)            “Director” means any person who serves or has served the Corporation as a director on the Board of Directors of the Corporation;

 

(iii)            “Disinterested Director” means, with respect to each Proceeding in respect of which indemnification is sought hereunder, a Director of the Corporation who is not and was not a party to such Proceeding;

 

(iv)            “Expenses” means all reasonable attorneys fees, retainers, court costs, transcript costs, fees of expert witnesses, private investigators and professional advisors (including, without limitation, accountants and investment bankers), travel expenses, duplicating costs, printing and binding costs, costs of preparation of demonstrative evidence and other courtroom presentation aids and devices, costs incurred in connection with document review, organization, imaging and computerization, telephone charges, postage, delivery service fees, and all other disbursements, costs or expenses of the type customarily incurred in connection with prosecuting, defending, preparing to prosecute or defend, investigating, being or preparing to be a witness in, settling or otherwise participating in, a Proceeding;

 

(v)            “Liabilities” means judgments, damages, liabilities, losses, penalties, excise taxes, fines and amounts paid in settlement;

 

(vi)            “Non-Officer Employee” means any person who serves or has served as an employee or agent of the Corporation, but who is not or was not a Director or Officer;

 

 

 

(vii)            “Officer” means any person who serves or has served the Corporation as an officer of the Corporation appointed by the Board of Directors of the Corporation;

 

(viii)            “Proceeding” means any threatened, pending or completed action, suit, arbitration, alternate dispute resolution mechanism, inquiry, investigation, administrative hearing or other proceeding, whether civil, criminal, administrative, arbitrative or investigative; and

 

(ix)            “Subsidiary” shall mean any corporation, partnership, limited liability company, joint venture, trust or other entity of which the Corporation owns (either directly or through or together with another Subsidiary of the Corporation) either (i) a general partner, managing member or other similar interest or (ii) (A) 50% or more of the voting power of the voting capital equity interests of such corporation, partnership, limited liability company, joint venture or other entity, or (B) 50% or more of the outstanding voting capital stock or other voting equity interests of such corporation, partnership, limited liability company, joint venture or other entity.

 

(b)            Indemnification of Directors and Officers. Subject to the operation of Section 5(d) of these By-laws, each Director and Officer shall be indemnified and held harmless by the Corporation to the fullest extent authorized by the DGCL, as the same exists or may hereafter be amended (but, in the case of any such amendment, only to the extent that such amendment permits the Corporation to provide broader indemnification rights than such law permitted the Corporation to provide prior to such amendment), and to the extent authorized in subsections (i) through (iv) of this Section 5(b).

 

(i)            Actions, Suits and Proceedings Other than By or In the Right of the Corporation. Each Director and Officer shall be indemnified and held harmless by the Corporation against any and all Expenses and Liabilities that are incurred or paid by such Director or Officer or on such Director’s or Officer’s behalf in connection with any Proceeding or any claim, issue or matter therein (other than an action by or in the right of the Corporation), which such Director or Officer is, or is threatened to be made, a party to or participant in by reason of such Director’s or Officer’s Corporate Status, if such Director or Officer acted in good faith and in a manner such Director or Officer reasonably believed to be in or not opposed to the best interests of the Corporation and, with respect to any criminal proceeding, had no reasonable cause to believe his or her conduct was unlawful.

 

(ii)            Actions, Suits and Proceedings By or In the Right of the Corporation. Each Director and Officer shall be indemnified and held harmless by the Corporation against any and all Expenses that are incurred by such Director or Officer or on such Director’s or Officer’s behalf in connection with any Proceeding or any claim, issue or matter therein by or in the right of the Corporation, which such Director or Officer is, or is threatened to be made, a party to or participant in by reason of such Director’s or Officer’s Corporate Status, if such Director or Officer acted in good faith and in a manner such Director or Officer reasonably believed to be in or not opposed to the best interests of the Corporation; provided, however, that no indemnification shall be made under this Section 5(b)(ii) in respect of any claim, issue or matter as to which such Director or Officer shall have been finally adjudged by a court of competent jurisdiction to be liable to the Corporation, unless, and only to the extent that, the Court of Chancery or another court in which such Proceeding was brought shall determine upon application that, despite adjudication of liability, but in view of all the circumstances of the case, such Director or Officer is fairly and reasonably entitled to indemnification for such Expenses that such court deems proper.

 

 

 

(iii)            Survival of Rights. The rights of indemnification provided by this Section 5(b) shall continue as to a Director or Officer after he or she has ceased to be a Director or Officer and shall inure to the benefit of his or her heirs, executors, administrators and personal representatives.

 

(iv)            Actions by Directors or Officers. Notwithstanding the foregoing, the Corporation shall indemnify any Director or Officer seeking indemnification in connection with a Proceeding initiated by such Director or Officer only if such Proceeding (including any parts of such Proceeding not initiated by such Director or Officer) was authorized in advance by the Board of Directors of the Corporation, unless such Proceeding was brought to enforce such Officer’s or Director’s rights to indemnification or, in the case of Directors, advancement of Expenses under these By- laws in accordance with the provisions set forth herein.

 

(c)            Indemnification of Non-Officer Employees. Subject to the operation of Section 5(d) of these By-laws, each Non-Officer Employee may, in the discretion of the Board of Directors of the Corporation, be indemnified by the Corporation to the fullest extent authorized by the DGCL, as the same exists or may hereafter be amended, against any or all Expenses and Liabilities that are incurred by such Non-Officer Employee or on such Non-Officer Employee’s behalf in connection with any threatened, pending or completed Proceeding, or any claim, issue or matter therein, which such Non-Officer Employee is, or is threatened to be made, a party to or participant in by reason of such Non-Officer Employee’s Corporate Status, if such Non-Officer Employee acted in good faith and in a manner such Non-Officer Employee reasonably believed to be in or not opposed to the best interests of the Corporation and, with respect to any criminal proceeding, had no reasonable cause to believe his or her conduct was unlawful. The rights of indemnification provided by this Section 5(c) shall exist as to a Non-Officer Employee after he or she has ceased to be a Non-Officer Employee and shall inure to the benefit of his or her heirs, personal representatives, executors and administrators. Notwithstanding the foregoing, the Corporation may indemnify any Non-Officer Employee seeking indemnification in connection with a Proceeding initiated by such Non-Officer Employee only if such Proceeding was authorized in advance by the Board of Directors of the Corporation.

 

(d)            Determination. Unless ordered by a court, no indemnification shall be provided pursuant to this Section 5 to a Director, to an Officer or to a Non-Officer Employee unless a determination shall have been made that such person acted in good faith and in a manner such person reasonably believed to be in or not opposed to the best interests of the Corporation and, with respect to any criminal Proceeding, such person had no reasonable cause to believe his or her conduct was unlawful. Such determination shall be made by (i) a majority vote of the Disinterested Directors, even though less than a quorum of the Board of Directors, (ii) a committee comprised of Disinterested Directors, such committee having been designated by a majority vote of the Disinterested Directors (even though less than a quorum), (iii) if there are no such Disinterested Directors, or if a majority of Disinterested Directors so directs, by independent legal counsel in a written opinion, or (iv) by the stockholders of the Corporation.

 

 

 

(e) Advancement of Expenses to Directors Prior to Final Disposition.

 

(i)            The Corporation shall advance all Expenses incurred by or on behalf of any Director in connection with any Proceeding in which such Director is involved by reason of such Director’s Corporate Status within thirty (30) days after the receipt by the Corporation of a written statement from such Director requesting such advance or advances from time to time, whether prior to or after final disposition of such Proceeding. Such statement or statements shall reasonably evidence the Expenses incurred by such Director and shall be preceded or accompanied by an undertaking by or on behalf of such Director to repay any Expenses so advanced if it shall ultimately be determined that such Director is not entitled to be indemnified against such Expenses. Notwithstanding the foregoing, the Corporation shall advance all Expenses incurred by or on behalf of any Director seeking advancement of expenses hereunder in connection with a Proceeding initiated by such Director only if such Proceeding (including any parts of such Proceeding not initiated by such Director) was (A) authorized by the Board of Directors of the Corporation, or (B) brought to enforce such Director’s rights to indemnification or advancement of Expenses under these By-laws.

 

(ii)            If a claim for advancement of Expenses hereunder by a Director is not paid in full by the Corporation within thirty (30) days after receipt by the Corporation of documentation of Expenses and the required undertaking, such Director may at any time thereafter bring suit against the Corporation to recover the unpaid amount of the claim and if successful in whole or in part, such Director shall also be entitled to be paid the expenses of prosecuting such claim. The failure of the Corporation (including its Board of Directors or any committee thereof, independent legal counsel, or stockholders) to make a determination concerning the permissibility of such advancement of Expenses under this Section 5 shall not be a defense to an action brought by a Director for recovery of the unpaid amount of an advancement claim and shall not create a presumption that such advancement is not permissible. The burden of proving that a Director is not entitled to an advancement of expenses shall be on the Corporation.

 

(iii)            In any suit brought by the Corporation to recover an advancement of expenses pursuant to the terms of an undertaking, the Corporation shall be entitled to recover such expenses upon a final adjudication that the Director has not met any applicable standard for indemnification set forth in the DGCL.

 

(f)            Advancement of Expenses to Officers and Non-Officer Employees Prior to Final Disposition.

 

(i)            The Corporation may, at the discretion of the Board of Directors of the Corporation, advance any or all Expenses incurred by or on behalf of any Officer or any Non-Officer Employee in connection with any Proceeding in which such person is involved by reason of his or her Corporate Status as an Officer or Non-Officer Employee upon the receipt by the Corporation of a statement or statements from such Officer or Non-Officer Employee requesting such advance or advances from time to time, whether prior to or after final disposition of such Proceeding. Such statement or statements shall reasonably evidence the Expenses incurred by such Officer or Non-Officer Employee and shall be preceded or accompanied by an undertaking by or on behalf of such person to repay any Expenses so advanced if it shall ultimately be determined that such Officer or Non-Officer Employee is not entitled to be indemnified against such Expenses.

 

 

 

(ii)            In any suit brought by the Corporation to recover an advancement of expenses pursuant to the terms of an undertaking, the Corporation shall be entitled to recover such expenses upon a final adjudication that the Officer or Non-Officer Employee has not met any applicable standard for indemnification set forth in the DGCL.

 

(g) Contractual Nature of Rights.

 

(i)            The provisions of this Section 5 shall be deemed to be a contract between the Corporation and each Director and Officer entitled to the benefits hereof at any time while this Section 5 is in effect, in consideration of such person’s past or current and any future performance of services for the Corporation. Neither amendment, repeal or modification of any provision of this Section 5 nor the adoption of any provision of the Certificate of Incorporation inconsistent with this Section 5 shall eliminate or reduce any right conferred by this Section 5 in respect of any act or omission occurring, or any cause of action or claim that accrues or arises or any state of facts existing, at the time of or before such amendment, repeal, modification or adoption of an inconsistent provision (even in the case of a proceeding based on such a state of facts that is commenced after such time), and all rights to indemnification and advancement of Expenses granted herein or arising out of any act or omission shall vest at the time of the act or omission in question, regardless of when or if any proceeding with respect to such act or omission is commenced. The rights to indemnification and to advancement of expenses provided by, or granted pursuant to, this Section 5 shall continue notwithstanding that the person has ceased to be a director or officer of the Corporation and shall inure to the benefit of the estate, heirs, executors, administrators, legatees and distributees of such person.

 

(ii)            If a claim for indemnification hereunder by a Director or Officer is not paid in full by the Corporation within sixty (60) days after receipt by the Corporation of a written claim for indemnification, such Director or Officer may at any time thereafter bring suit against the Corporation to recover the unpaid amount of the claim, and if successful in whole or in part, such Director or Officer shall also be entitled to be paid the expenses of prosecuting such claim. The failure of the Corporation (including its Board of Directors or any committee thereof, independent legal counsel, or stockholders) to make a determination concerning the permissibility of such indemnification under this Section 5 shall not be a defense to an action brought by a Director or Officer for recovery of the unpaid amount of an indemnification claim and shall not create a presumption that such indemnification is not permissible. The burden of proving that a Director or Officer is not entitled to indemnification shall be on the Corporation.

 

 

 

(iii)            In any suit brought by a Director or Officer to enforce a right to indemnification hereunder, it shall be a defense that such Director or Officer has not met any applicable standard for indemnification set forth in the DGCL.

 

(h)            Non-Exclusivity of Rights. The rights to indemnification and advancement of Expenses set forth in this Section 5 shall not be exclusive of any other right which any Director, Officer, or Non-Officer Employee may have or hereafter acquire under any statute, provision of the Certificate or these By-laws, agreement, vote of stockholders or Disinterested Directors or otherwise.

 

(i)            Insurance. The Corporation may maintain insurance, at its expense, to protect itself and any Director, Officer or Non-Officer Employee against any liability of any character asserted against or incurred by the Corporation or any such Director, Officer or Non- Officer Employee, or arising out of any such person’s Corporate Status, whether or not the Corporation would have the power to indemnify such person against such liability under the DGCL or the provisions of this Section 5.

 

(j)            Other Indemnification. The Corporation’s obligation, if any, to indemnify or provide advancement of Expenses to any person under this Section 5 as a result of such person serving, at the request of the Corporation, as a director, partner, trustee, officer, employee or agent of another corporation, partnership, joint venture, trust, employee benefit plan or other enterprise shall be reduced by any amount such person may collect as indemnification or advancement of Expenses from such other corporation, partnership, joint venture, trust, employee benefit plan or enterprise (the “Primary Indemnitor”). Any indemnification or advancement of Expenses under this Section 5 owed by the Corporation as a result of a person serving, at the request of the Corporation, as a director, partner, trustee, officer, employee or agent of another corporation, partnership, joint venture, trust, employee benefit plan or other enterprise shall only be in excess of, and shall be secondary to, the indemnification or advancement of Expenses available from the applicable Primary Indemnitor(s) and any applicable insurance policies.

 

6. Miscellaneous Provisions

 

(a)            Fiscal Year. Except as otherwise determined by the Board of Directors, the fiscal year of the Corporation shall end on December 31 of each year.

 

(b)            Seal. The Board of Directors shall have power to adopt and alter the seal of the Corporation.

 

(c)            Execution of Instruments. Subject to any limitations which may be set forth in a resolution of the Board of Directors, all deeds, leases, transfers, contracts, bonds, notes and other obligations to be entered into by the Corporation in the ordinary course of its business without director action may be executed on behalf of the Corporation by, a President, or by any other officer, employee or agent of the Corporation as the Board of Directors may authorize.

 

(d)            Voting of Securities. Unless the Board of Directors otherwise provides, a President, any Vice President or the Treasurer may waive notice of and act on behalf of this Corporation, or appoint another person or persons to act as proxy or attorney in fact for this Corporation with or without discretionary power and/or power of substitution, at any meeting of stockholders or shareholders of any other corporation or organization, any of whose securities are held by this Corporation.

 

 

 

(e)            Resident Agent. The Board of Directors may appoint a resident agent upon whom legal process may be served in any action or proceeding against the Corporation.

 

(f)            Corporate Records. The original or attested copies of the Certificate of Incorporation, By-laws and records of all meetings of the incorporators, stockholders and the Board of Directors and the stock and transfer records, which shall contain the names of all stockholders, their record addresses and the amount of stock held by each, shall be kept at the principal office of the Corporation, at the office of its counsel, or at an office of its transfer agent.

 

(g)            Certificate of Incorporation. All references in these By-laws to the Certificate of Incorporation shall be deemed to refer to the Certificate of Incorporation of the Corporation, as amended and in effect from time to time.

 

(h)            Amendments. These By-laws may be altered, amended or repealed, and new By-laws may be adopted, by the stockholders or by the Board of Directors; provided, that (a) the Board of Directors may not alter, amend or repeal any provision of these By-laws which by law, by the Certificate of Incorporation or by these By-laws requires action by the stockholders and (b) any alteration, amendment or repeal of these By-laws by the Board of Directors and any new By-law adopted by the Board of Directors may be altered, amended or repealed by the stockholders.

 

(i)            Waiver of Notice. Whenever notice is required to be given under any provision of these By-laws, a written waiver, signed by the person entitled to notice, or a waiver by electronic transmission by the person entitled to notice, whether before or after the time of the event for which notice is to be given, shall be deemed equivalent to notice. Attendance of a person at a meeting shall constitute a waiver of notice of such meeting, except when the person attends a meeting for the express purpose of objecting at the beginning of the meeting to the transaction of any business because the meeting is not lawfully called or convened. Neither the business to be transacted at, nor the purpose of, any meeting needs to be specified in any written waiver or any waiver by electronic transmission.

 

Adopted February 10, 2012

 

 

 

Exhibit 10.1

 

908 DEVICES INC.

 

2012 STOCK OPTION AND GRANT PLAN

 

SECTION 1. GENERAL PURPOSE OF THE PLAN; DEFINITIONS

 

The name of the plan is the 908 Devices Inc. 2012 Stock Option and Grant Plan (the “Plan”). The purpose of the Plan is to encourage and enable the officers, employees, directors, Consultants and other key persons of 908 Devices Inc., a Delaware corporation (including any successor entity, the “Company”) and its Subsidiaries, upon whose judgment, initiative and efforts the Company largely depends for the successful conduct of its business, to acquire a proprietary interest in the Company.

 

The following terms shall be defined as set forth below:

 

“Affiliate” of any Person means a Person that directly or indirectly, through one or more intermediaries, controls, is controlled by or is under common control with the first mentioned Person. A Person shall be deemed to control another Person if such first Person possesses directly or indirectly the power to direct, or cause the direction of, the management and policies of the second Person, whether through the ownership of voting securities, by contract or otherwise.

 

“Award” or “Awards,” except where referring to a particular category of grant under the Plan, shall include Incentive Stock Options, Non-Qualified Stock Options, Restricted Stock Awards or Unrestricted Stock Awards or any combination of the foregoing.

 

“Award Agreement” means a written or electronic agreement setting forth the terms and provisions applicable to an Award granted under the Plan. Each Award Agreement may contain terms and conditions in addition to those set forth in the Plan; provided, however, in the event of any conflict in the terms of the Plan and the Award Agreement, the terms of the Plan shall govern.

 

“Board” means the Board of Directors of the Company.

 

“Cause” shall have the meaning as set forth in the Award Agreement(s). In the case that any Award Agreement does not contain a definition of “Cause,” it shall mean (i) the grantee’s dishonest statements or acts with respect to the Company or any Affiliate of the Company, or any current or prospective customers, suppliers vendors or other third parties with which such entity does business; (ii) the grantee’s commission of (A) a felony or (B) any misdemeanor involving moral turpitude, deceit, dishonesty or fraud; (iii) the grantee’s failure to perform his assigned duties and responsibilities to the reasonable satisfaction of the Company which failure continues, in the reasonable judgment of the Company, after written notice given to the grantee by the Company; (iv) the grantee’s gross negligence, willful misconduct or insubordination with respect to the Company or any Affiliate of the Company; or (v) the grantee’s material violation of any provision of any agreement(s) between the grantee and the Company relating to noncompetition, nonsolicitation, nondisclosure and/or assignment of inventions.

 

 

 

 

“Chief Executive Officer” means the Chief Executive Officer of the Company or, if there is no Chief Executive Officer, then the President of the Company.

 

“Code” means the Internal Revenue Code of 1986, as amended, and any successor Code, and related rules, regulations and interpretations.

 

“Committee” means the Committee of the Board referred to in Section 2.

 

“Consultant” means any natural person that provides bona fide services to the Company (including a Subsidiary), and such services are not in connection with the offer or sale of securities in a capital-raising transaction and do not directly or indirectly promote or maintain a market for the Company’s securities.

 

“Disability” means “disability” as defined in Section 422(c) of the Code.

 

“Effective Date” means the date on which the Plan is adopted as set forth on the final page of the Plan.

 

“Exchange Act” means the Securities Exchange Act of 1934, as amended, and the rules and regulations thereunder.

 

“Fair Market Value” of the Stock on any given date means the fair market value of the Stock determined in good faith by the Committee based on the reasonable application of a reasonable valuation method not inconsistent with Section 409A of the Code. If the Stock is admitted to trade on a national securities exchange, the determination shall be made by reference to the closing price reported on such exchange. If there is no closing price for such date, the determination shall be made by reference to the last date preceding such date for which there is a closing price. If the date for which Fair Market Value is determined is the first day when trading prices for the Stock are reported on a national securities exchange, the Fair Market Value shall be the “Price to the Public” (or equivalent) set forth on the cover page for the final prospectus relating to the Company’s Initial Public Offering.

 

“Good Reason” shall have the meaning as set forth in the Award Agreement(s). In the case that any Award Agreement does not contain a definition of “Good Reason,” it shall mean (i) a material diminution in the grantee’s base salary except for across-the-board salary reductions similarly affecting all or substantially all similarly situated employees of the Company or (ii) a change of more than 50 miles in the geographic location at which the grantee provides services to the Company, so long as the grantee provides at least 90 days notice to the Company following the initial occurrence of any such event and the Company fails to cure such event within 30 days thereafter.

 

“Grant Date” means the date that the Committee designates in its approval of an Award in accordance with applicable law as the date on which the Award is granted, which date may not precede the date of such Committee approval.

 

“Holder” means, with respect to an Award or any Shares, the Person holding such Award or Shares, including the initial recipient of the Award or any Permitted Transferee.

 

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“Incentive Stock Option” means any Stock Option designated and qualified as an “incentive stock option” as defined in Section 422 of the Code.

 

“Initial Public Offering” means the consummation of the first firm commitment underwritten public offering pursuant to an effective registration statement under the Securities Act covering the offer and sale by the Company of its equity securities, as a result of or following which the Stock shall be publicly held.

 

“Non-Qualified Stock Option” means any Stock Option that is not an Incentive Stock Option.

 

“Option” or “Stock Option” means any option to purchase shares of Stock granted pursuant to Section 5.

 

“Permitted Transferees” shall mean any of the following to whom a Holder may transfer Shares hereunder (as set forth in Section 9(a)(ii)(A)): the Holder’s child, stepchild, grandchild, parent, stepparent, grandparent, spouse, former spouse, sibling, niece, nephew, mother-in-law, father-in-law, son-in-law, daughter-in-law, brother-in-law, or sister-in-law, including adoptive relationships, any person sharing the Holder’s household (other than a tenant or employee), a trust in which these persons have more than fifty percent of the beneficial interest, a foundation in which these persons control the management of assets, and any other entity in which these persons own more than fifty percent of the voting interests; provided, however, that any such trust does not require or permit distribution of any Shares during the term of the Award Agreement unless subject to its terms. Upon the death of the Holder, the term Permitted Transferees shall also include such deceased Holder’s estate, executors, administrators, personal representatives, heirs, legatees and distributees, as the case may be.

 

“Person” shall mean any individual, corporation, partnership (limited or general), limited liability company, limited liability partnership, association, trust, joint venture, unincorporated organization or any similar entity.

 

“Restricted Stock Award” means Awards granted pursuant to Section 6 and “Restricted Stock” means Shares issued pursuant to such Awards.

 

“Sale Event” means the consummation of (i) the dissolution or liquidation of the Company, (ii) the sale of all or substantially all of the assets of the Company on a consolidated basis to an unrelated person or entity, (iii) a merger, reorganization or consolidation pursuant to which the holders of the Company’s outstanding voting power immediately prior to such transaction do not own a majority of the outstanding voting power of the surviving or resulting entity (or its ultimate parent, if applicable), (iv) the acquisition of all or a majority of the outstanding voting stock of the Company in a single transaction or a series of related transactions by a Person or group of Persons, or (v) any other acquisition of the business of the Company, as determined by the Board; provided, however, that the Company’s Initial Public Offering, any subsequent public offering or another capital raising event, or a merger effected solely to change the Company’s domicile shall not constitute a “Sale Event.”

 

“Section 409A” means Section 409A of the Code and the regulations and other guidance promulgated thereunder.

 

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“Securities Act” means the Securities Act of 1933, as amended, and the rules and regulations thereunder.

 

“Service Relationship” means any relationship as a full-time employee, part-time employee, director or other key person (including Consultants) of the Company or any Subsidiary or any successor entity (e.g., a Service Relationship shall be deemed to continue without interruption in the event an individual’s status changes from full-time employee to part- time employee or Consultant).

 

“Shares” means shares of Stock.

 

“Stock” means the Common Stock, par value $0.001 per share, of the Company. “Subsidiary” means any corporation or other entity (other than the Company) in which

 

the Company has more than a 50 percent interest, either directly or indirectly.

 

“Ten Percent Owner” means an employee who owns or is deemed to own (by reason of the attribution rules of Section 424(d) of the Code) more than 10 percent of the combined voting power of all classes of stock of the Company or any parent of the Company or any Subsidiary.

 

“Termination Event” means the termination of the Award recipient’s Service Relationship with the Company and its Subsidiaries for any reason whatsoever, regardless of the circumstances thereof, and including, without limitation, upon death, disability, retirement, discharge or resignation for any reason, whether voluntarily or involuntarily. The following shall not constitute a Termination Event: (i) a transfer to the service of the Company from a Subsidiary or from the Company to a Subsidiary, or from one Subsidiary to another Subsidiary or (ii) an approved leave of absence for military service or sickness, or for any other purpose approved by the Committee, if the individual’s right to re-employment is guaranteed either by a statute or by contract or under the policy pursuant to which the leave of absence was granted or if the Committee otherwise so provides in writing.

 

“Unrestricted Stock Award” means any Award granted pursuant to Section 7 and

 

“Unrestricted Stock” means Shares issued pursuant to such Awards.

 

SECTION 2. ADMINISTRATION OF PLAN; COMMITTEE AUTHORITY TO SELECT GRANTEES AND DETERMINE AWARDS

 

(a)            Administration of Plan. The Plan shall be administered by the Board, or at the discretion of the Board, by a committee of the Board, comprised of not less than two directors. All references herein to the “Committee” shall be deemed to refer to the group then responsible for administration of the Plan at the relevant time (i.e., either the Board of Directors or a committee or committees of the Board, as applicable).

 

(b)            Powers of Committee. The Committee shall have the power and authority to grant Awards consistent with the terms of the Plan, including the power and authority:

 

(i)            to select the individuals to whom Awards may from time to time be granted;

 

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(ii)           to determine the time or times of grant, and the amount, if any, of Incentive Stock Options, Non-Qualified Stock Options, Restricted Stock Awards, Unrestricted Stock Awards, or any combination of the foregoing, granted to any one or more grantees;

 

(iii)           to determine the number of Shares to be covered by any Award and, subject to the provisions of the Plan, the price, exercise price, conversion ratio or other price relating thereto;

 

(iv)          to determine and, subject to Section 12, to modify from time to time the terms and conditions, including restrictions, not inconsistent with the terms of the Plan, of any Award, which terms and conditions may differ among individual Awards and grantees, and to approve the form of Award Agreements;

 

(v)           to accelerate at any time the exercisability or vesting of all or any portion of any Award;

 

(vi)          to impose any limitations on Awards, including limitations on transfers, repurchase provisions and the like, and to exercise repurchase rights or obligations;

 

(vii)         subject to Section 5(a)(ii) and any restrictions imposed by Section 409A, to extend at any time the period in which Stock Options may be exercised; and

 

(viii)        at any time to adopt, alter and repeal such rules, guidelines and practices for administration of the Plan and for its own acts and proceedings as it shall deem advisable; to interpret the terms and provisions of the Plan and any Award (including Award Agreements); to make all determinations it deems advisable for the administration of the Plan; to decide all disputes arising in connection with the Plan; and to otherwise supervise the administration of the Plan.

 

All decisions and interpretations of the Committee shall be binding on all persons, including the Company and all Holders.

 

(c)            Award Agreement. Awards under the Plan shall be evidenced by Award Agreements that set forth the terms, conditions and limitations for each Award.

 

(d)            Indemnification. Neither the Board nor the Committee, nor any member of either or any delegate thereof, shall be liable for any act, omission, interpretation, construction or determination made in good faith in connection with the Plan, and the members of the Board and the Committee (and any delegate thereof) shall be entitled in all cases to indemnification and reimbursement by the Company in respect of any claim, loss, damage or expense (including, without limitation, reasonable attorneys’ fees) arising or resulting therefrom to the fullest extent permitted by law and/or under the Company’s governing documents, including its certificate of incorporation or bylaws, or any directors’ and officers’ liability insurance coverage which may be in effect from time to time and/or any indemnification agreement between such individual and the Company.

 

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(e)            Foreign Award Recipients. Notwithstanding any provision of the Plan to the contrary, in order to comply with the laws in other countries in which the Company and any Subsidiary operate or have employees or other individuals eligible for Awards, the Committee, in its sole discretion, shall have the power and authority to: (i) determine which Subsidiaries, if any, shall be covered by the Plan; (ii) determine which individuals, if any, outside the United States are eligible to participate in the Plan; (iii) modify the terms and conditions of any Award granted to individuals outside the United States to comply with applicable foreign laws; (iv) establish subplans and modify exercise procedures and other terms and procedures, to the extent the Committee determines such actions to be necessary or advisable (and such subplans and/or modifications shall be attached to the Plan as appendices); provided, however, that no such subplans and/or modifications shall increase the share limitation contained in Section 3(a) hereof; and (v) take any action, before or after an Award is made, that the Committee determines to be necessary or advisable to obtain approval or comply with any local governmental regulatory exemptions or approvals.

 

SECTION 3. STOCK ISSUABLE UNDER THE PLAN; MERGERS AND OTHER TRANSACTIONS; SUBSTITUTION

 

(a)            Stock Issuable. The maximum number of Shares reserved and available for issuance under the Plan shall be 299,950 Shares, subject to adjustment as provided in Section 3(b). For purposes of this limitation, the Shares underlying any Awards that are forfeited, canceled, reacquired by the Company prior to vesting, satisfied without the issuance of Stock or otherwise terminated (other than by exercise) and Shares that are withheld upon exercise of an Option or settlement of an Award to cover the exercise price or tax withholding shall be added back to the Shares available for issuance under the Plan. Subject to such overall limitations, Shares may be issued up to such maximum number pursuant to any type or types of Award, and no more than 3,000,000 Shares may be issued pursuant to Incentive Stock Options. The Shares available for issuance under the Plan may be authorized but unissued Shares or Shares reacquired by the Company. Beginning on the date that the Company becomes subject to Section 162(m) of the Code, Options with respect to no more than 300,000 Shares shall be granted to any one individual in any calendar year period.

 

(b)            Changes in Stock. Subject to Section 3(c) hereof, if, as a result of any reorganization, recapitalization, reclassification, stock dividend, stock split, reverse stock split or other similar change in the Company’s capital stock, the outstanding Shares are increased or decreased or are exchanged for a different number or kind of shares or other securities of the Company, or additional Shares or new or different shares or other securities of the Company or other non-cash assets are distributed with respect to such Shares or other securities, in each case, without the receipt of consideration by the Company, or, if, as a result of any merger or consolidation, or sale of all or substantially all of the assets of the Company, the outstanding Shares are converted into or exchanged for other securities of the Company or any successor entity (or a parent or subsidiary thereof), the Committee shall make an appropriate and proportionate adjustment in (i) the maximum number of Shares reserved for issuance under the Plan, (ii) the number and kind of Shares or other securities subject to any then outstanding Awards under the Plan, (iii) the repurchase price, if any, per Share subject to each outstanding Award, and (iv) the exercise price for each Share subject to any then outstanding Stock Options under the Plan, without changing the aggregate exercise price (i.e., the exercise price multiplied by the number of Stock Options) as to which such Stock Options remain exercisable. The Committee shall in any event make such adjustments as may be required by Section 25102(o) of the California Corporation Code and the rules and regulations promulgated thereunder. The adjustment by the Committee shall be final, binding and conclusive. No fractional Shares shall be issued under the Plan resulting from any such adjustment, but the Committee in its discretion may make a cash payment in lieu of fractional shares.

 

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(c) Sale Events.

 

(i) Options.

 

(A)            In the case of and subject to the consummation of a Sale Event, the Plan and all outstanding Options issued hereunder shall terminate upon the effective time of any such Sale Event unless assumed or continued by the successor entity, or new stock options or other awards of the successor entity or parent thereof are substituted therefor, with an equitable or proportionate adjustment as to the number and kind of shares and, if appropriate, the per share exercise prices, as such parties shall agree (after taking into account any acceleration hereunder and/or pursuant to the terms of any Award Agreement).

 

(B)            In the event of the termination of the Plan and all outstanding Options issued hereunder pursuant to Section 3(c), each Holder of Options shall be permitted, within a period of time prior to the consummation of the Sale Event as specified by the Committee, to exercise all such Options which are then exercisable or will become exercisable as of the effective time of the Sale Event; provided, however, that the exercise of Options not exercisable prior to the Sale Event shall be subject to the consummation of the Sale Event.

 

(C)            Notwithstanding anything to the contrary in Section 3(c)(i)(A), in the event of a Sale Event, the Company shall have the right, but not the obligation, to make or provide for a cash payment to the Holders of Options, without any consent of the Holders, in exchange for the cancellation thereof, in an amount equal to the difference between (A) the value as determined by the Committee of the consideration payable per share of Stock pursuant to the Sale Event (the “Sale Price”) times the number of Shares subject to outstanding Options being cancelled (to the extent then vested and exercisable, including by reason of acceleration in connection with such Sale Event, at prices not in excess of the Sale Price) and (B) the aggregate exercise price of all such outstanding vested and exercisable Options.

 

(ii) Restricted Stock Awards.

 

(A)            In the case of and subject to the consummation of a Sale Event, all Restricted Stock Awards (other than those becoming vested as a result of the Sale Event) issued hereunder shall be forfeited immediately prior to the effective time of any such Sale Event unless assumed or continued by the successor entity, or awards of the successor entity or parent thereof are substituted therefor, with an equitable or proportionate adjustment as to the number and kind of shares subject to such awards as such parties shall agree (after taking into account any acceleration hereunder and/or pursuant to the terms of any Award Agreement).

 

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(B)            In the event of the forfeiture of Restricted Stock pursuant to Section 3(c)(ii)(A), such Restricted Stock shall be repurchased from the Holder thereof at a price per share equal to the lower of the original per share purchase price paid by the Holder (subject to adjustment as provided in Section 3(b)) or the current Fair Market Value of such Shares, determined immediately prior to the effective time of the Sale Event.

 

(C)            Notwithstanding anything to the contrary in Section 3(c)(ii)(A), in the event of a Sale Event, the Company shall have the right, but not the obligation, to make or provide for a cash payment to the Holders of Restricted Stock Awards, without consent of the Holders, in exchange for the cancellation thereof, in an amount equal to the Sale Price times the number of Shares subject to such Awards, to be paid at the time of such Sale Event or upon the later vesting of such Awards.

 

SECTION 4. ELIGIBILITY

 

Grantees under the Plan will be such full or part-time officers and other employees, directors, Consultants and key persons of the Company and any Subsidiary who are selected from time to time by the Committee in its sole discretion; provided, however, that Awards shall be granted only to those individuals described in Rule 701(c) of the Securities Act.

 

SECTION 5. STOCK OPTIONS

 

Upon the grant of a Stock Option, the Company and the grantee shall enter into an Award Agreement. The terms and conditions of each such Award Agreement shall be determined by the Committee, and such terms and conditions may differ among individual Awards and grantees.

 

Stock Options granted under the Plan may be either Incentive Stock Options or Non- Qualified Stock Options. Incentive Stock Options may be granted only to employees of the Company or any Subsidiary that is a “subsidiary corporation” within the meaning of

 

Section 424(f) of the Code. To the extent that any Option does not qualify as an Incentive Stock Option, it shall be deemed a Non-Qualified Stock Option.

 

(a)            Terms of Stock Options. The Committee in its discretion may grant Stock Options to those individuals who meet the eligibility requirements of Section 4. Stock Options shall be subject to the following terms and conditions and shall contain such additional terms and conditions, not inconsistent with the terms of the Plan, as the Committee shall deem desirable.

 

(i)            Exercise Price. The exercise price per share for the Shares covered by a Stock Option shall be determined by the Committee at the time of grant but shall not be less than 100 percent of the Fair Market Value on the Grant Date. In the case of an Incentive Stock Option that is granted to a Ten Percent Owner, the exercise price per share for the Shares covered by such Incentive Stock Option shall not be less than 110 percent of the Fair Market Value on the Grant Date.

 

(ii)           Option Term. The term of each Stock Option shall be fixed by the Committee, but no Stock Option shall be exercisable more than ten years from the Grant Date.

 

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In the case of an Incentive Stock Option that is granted to a Ten Percent Owner, the term of such Stock Option shall be no more than five years from the Grant Date.

 

(iii)          Exercisability; Rights of a Stockholder. Stock Options shall become exercisable and/or vested at such time or times, whether or not in installments, as shall be determined by the Committee at or after the Grant Date. The Award Agreement may permit a grantee to exercise all or a portion of a Stock Option immediately at grant; provided that the Shares issued upon such exercise shall be subject to restrictions and a vesting schedule identical to the vesting schedule of the related Stock Option, such Shares shall be deemed to be Restricted Stock for purposes of the Plan, and the optionee may be required to enter into an additional or new Award Agreement as a condition to exercise of such Stock Option. An optionee shall have the rights of a stockholder only as to Shares acquired upon the exercise of a Stock Option and not as to unexercised Stock Options. An optionee shall not be deemed to have acquired any Shares unless and until a Stock Option shall have been exercised pursuant to the terms of the Award Agreement and this Plan and the optionee’s name has been entered on the books of the Company as a stockholder.

 

(iv)          Method of Exercise. Stock Options may be exercised by an optionee in whole or in part, by the optionee giving written or electronic notice of exercise to the Company, specifying the number of Shares to be purchased. Payment of the purchase price may be made by one or more of the following methods (or any combination thereof) to the extent provided in the Award Agreement:

 

(A)            In cash, by certified or bank check, by wire transfer of immediately available funds, or other instrument acceptable to the Committee;

 

(B)            If permitted by the Committee, by the optionee delivering to the Company a promissory note, if the Board has expressly authorized the loan of funds to the optionee for the purpose of enabling or assisting the optionee to effect the exercise of his or her Stock Option; provided, that at least so much of the exercise price as represents the par value of the Stock shall be paid in cash if required by state law;

 

(C)            If permitted by the Committee and the Initial Public Offering has occurred (or the Stock otherwise becomes publicly-traded), through the delivery (or attestation to the ownership) of Shares that have been purchased by the optionee on the open market or that are beneficially owned by the optionee and are not then subject to restrictions under any Company plan. To the extent required to avoid variable accounting treatment under ASC 718 or other applicable accounting rules, such surrendered Shares if originally purchased from the Company shall have been owned by the optionee for at least six months. Such surrendered Shares shall be valued at Fair Market Value on the exercise date;

 

(D)            If permitted by the Committee and the Initial Public Offering has occurred (or the Stock otherwise becomes publicly-traded), by the optionee delivering to the Company a properly executed exercise notice together with irrevocable instructions to a broker to promptly deliver to the Company cash or a check payable and acceptable to the Company for the purchase price; provided that in the event the optionee chooses to pay the purchase price as so provided, the optionee and the broker shall comply with such procedures and enter into such agreements of indemnity and other agreements as the Committee shall prescribe as a condition of such payment procedure; or

 

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(E)            If permitted by the Committee, and only with respect to Stock Options that are not Incentive Stock Options, by a “net exercise” arrangement pursuant to which the Company will reduce the number of Shares issuable upon exercise by the largest whole number of Shares with a Fair Market Value that does not exceed the aggregate exercise price.

 

Payment instruments will be received subject to collection. No certificates for Shares so purchased will be issued to the optionee or, with respect to uncertificated Stock, no transfer to the optionee on the records of the Company will take place, until the Company has completed all steps it has deemed necessary to satisfy legal requirements relating to the issuance and sale of the Shares, which steps may include, without limitation, (i) receipt of a representation from the optionee at the time of exercise of the Option that the optionee is purchasing the Shares for the optionee’s own account and not with a view to any sale or distribution of the Shares or other representations relating to compliance with applicable law governing the issuance of securities, (ii) the legending of the certificate (or notation on any book entry) representing the Shares to evidence the foregoing restrictions, and (iii) obtaining from optionee payment or provision for all withholding taxes due as a result of the exercise of the Option. The delivery of certificates representing the shares of Stock (or the transfer to the optionee on the records of the Company with respect to uncertificated Stock) to be purchased pursuant to the exercise of a Stock Option will be contingent upon (A) receipt from the optionee (or a purchaser acting in his or her stead in accordance with the provisions of the Stock Option) by the Company of the full purchase price for such Shares and the fulfillment of any other requirements contained in the Award Agreement or applicable provisions of laws and (B) if required by the Company, the optionee shall have entered into any stockholders agreements or other agreements with the Company and/or certain other of the Company’s stockholders relating to the Stock. In the event an optionee chooses to pay the purchase price by previously-owned Shares through the attestation method, the number of Shares transferred to the optionee upon the exercise of the Stock Option shall be net of the number of Shares attested to.

 

(b)            Annual Limit on Incentive Stock Options. To the extent required for “incentive stock option” treatment under Section 422 of the Code, the aggregate Fair Market Value (determined as of the Grant Date) of the Shares with respect to which Incentive Stock Options granted under the Plan and any other plan of the Company or its parent and any Subsidiary that become exercisable for the first time by an optionee during any calendar year shall not exceed $100,000 or such other limit as may be in effect from time to time under Section 422 of the Code. To the extent that any Stock Option exceeds this limit, it shall constitute a Non-Qualified Stock Option.

 

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(c)            Termination. Any portion of a Stock Option that is not vested and exercisable on the date of termination of an optionee’s Service Relationship shall immediately expire and be null and void. Once any portion of the Stock Option becomes vested and exercisable, the optionee’s right to exercise such portion of the Stock Option (or the optionee’s representatives and legatees as applicable) in the event of a termination of the optionee’s Service Relationship shall continue until the earliest of: (i) the date which is: (A) 12 months following the date on which the optionee’s Service Relationship terminates due to death or Disability (or such longer period of time as determined by the Committee and set forth in the applicable Award Agreement), or (B) three months following the date on which the optionee’s Service Relationship terminates if the termination is due to any reason other than death or Disability (or such longer period of time as determined by the Committee and set forth in the applicable Award Agreement), or (ii) the Expiration Date set forth in the Award Agreement; provided that notwithstanding the foregoing, an Award Agreement may provide that if the optionee’s Service Relationship is terminated for Cause, the Stock Option shall terminate immediately and be null and void upon the date of the optionee’s termination and shall not thereafter be exercisable.

 

SECTION 6. RESTRICTED STOCK AWARDS

 

(a)            Nature of Restricted Stock Awards. The Committee may, in its sole discretion, grant (or sell at par value or such other purchase price determined by the Committee) to an eligible individual under Section 4 hereof a Restricted Stock Award under the Plan. The Committee shall determine the restrictions and conditions applicable to each Restricted Stock Award at the time of grant. Conditions may be based on continuing employment (or other Service Relationship), achievement of pre-established performance goals and objectives and/or such other criteria as the Committee may determine. Upon the grant of a Restricted Stock Award, the Company and the grantee shall enter into an Award Agreement. The terms and conditions of each such Award Agreement shall be determined by the Committee, and such terms and conditions may differ among individual Awards and grantees.

 

(b)            Rights as a Stockholder. Upon the grant of the Restricted Stock Award and payment of any applicable purchase price, a grantee of Restricted Stock shall be considered the record owner of and shall be entitled to vote the Restricted Stock if, and to the extent, such Shares are entitled to voting rights, subject to such conditions contained in the Award Agreement. The grantee shall be entitled to receive all dividends and any other distributions declared on the Shares; provided, however, that the Company is under no duty to declare any such dividends or to make any such distribution. Unless the Committee shall otherwise determine, certificates evidencing the Restricted Stock shall remain in the possession of the Company until such Restricted Stock is vested as provided in subsection (d) below of this Section, and the grantee shall be required, as a condition of the grant, to deliver to the Company a stock power endorsed in blank and such other instruments of transfer as the Committee may prescribe.

 

(c)            Restrictions. Restricted Stock may not be sold, assigned, transferred, pledged or otherwise encumbered or disposed of except as specifically provided herein or in the Award Agreement. Except as may otherwise be provided by the Committee either in the Award Agreement or, subject to Section 12 below, in writing after the Award Agreement is issued, if a grantee’s Service Relationship with the Company and any Subsidiary terminates, the Company or its assigns shall have the right, as may be specified in the relevant instrument, to repurchase some or all of the Shares subject to the Award at such purchase price as is set forth in the Award Agreement.

 

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(d)            Vesting of Restricted Stock. The Committee at the time of grant shall specify in the Award Agreement the date or dates and/or the attainment of pre-established performance goals, objectives and other conditions on which the substantial risk of forfeiture imposed shall lapse and the Restricted Stock shall become vested, subject to such further rights of the Company or its assigns as may be specified in the Award Agreement.

 

SECTION 7. UNRESTRICTED STOCK AWARDS

 

The Committee may, in its sole discretion, grant (or sell at par value or such other purchase price determined by the Committee) to an eligible person under Section 4 hereof an Unrestricted Stock Award under the Plan. Unrestricted Stock Awards may be granted in respect of past services or other valid consideration, or in lieu of cash compensation due to such grantee.

 

SECTION 8. TRANSFER RESTRICTIONS; COMPANY RIGHT OF FIRST REFUSAL; COMPANY REPURCHASE RIGHTS

 

(a) Restrictions on Transfer.

 

(i)            Non-Transferability of Stock Options. Stock Options and, prior to exercise, the Shares issuable upon exercise of such Stock Option, shall not be transferable by the optionee otherwise than by will, or by the laws of descent and distribution, and all Stock Options shall be exercisable, during the optionee’s lifetime, only by the optionee, or by the optionee’s legal representative or guardian in the event of the optionee’s incapacity. Notwithstanding the foregoing, the Committee, in its sole discretion, may provide in the Award Agreement regarding a given Stock Option that the optionee may transfer by gift, without consideration for the transfer, his or her Non-Qualified Stock Options to his or her family members (as defined in Rule 701 of the Securities Act), to trusts for the benefit of such family members, or to partnerships in which such family members are the only partners (to the extent such trusts or partnerships are considered “family members” for purposes of Rule 701 of the Securities Act), provided that the transferee agrees in writing with the Company to be bound by all of the terms and conditions of this Plan and the applicable Award Agreement, including the execution of a stock power upon the issuance of Shares. Stock Options, and the Shares issuable upon exercise of such Stock Options, shall be restricted as to any pledge, hypothecation, or other transfer, including any short position, any “put equivalent position” (as defined in the Exchange Act) or any “call equivalent position” (as defined in the Exchange Act) prior to exercise.

 

(ii)           Shares. No Shares shall be sold, assigned, transferred, pledged, hypothecated, given away or in any other manner disposed of or encumbered, whether voluntarily or by operation of law, unless (i) the transfer is in compliance with the terms of the applicable Award Agreement, all applicable securities laws (including, without limitation, the Securities Act), and with the terms and conditions of this Section 9, (ii) the transfer does not cause the Company to become subject to the reporting requirements of the Exchange Act, and (iii)            the transferee consents in writing to be bound by the provisions of the Plan and the Award Agreement, including this Section 9. In connection with any proposed transfer, the Committee may require the transferor to provide at the transferor’s own expense an opinion of counsel to the transferor, satisfactory to the Committee, that such transfer is in compliance with all foreign, federal and state securities laws (including, without limitation, the Securities Act). Any attempted transfer of Shares not in accordance with the terms and conditions of this Section 9 shall be null and void, and the Company shall not reflect on its records any change in record ownership of any Shares as a result of any such transfer, shall otherwise refuse to recognize any such transfer and shall not in any way give effect to any such transfer of Shares. The Company shall be entitled to seek protective orders, injunctive relief and other remedies available at law or in equity including, without limitation, seeking specific performance or the rescission of any transfer not made in strict compliance with the provisions of this Section 9. Subject to the foregoing general provisions, and unless otherwise provided in the applicable Award Agreement, Shares may be transferred pursuant to the following specific terms and conditions (provided that with respect to any transfer of Restricted Stock, all vesting and forfeiture provisions shall continue to apply with respect to the original recipient):

 

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(A)            Transfers to Permitted Transferees. The Holder may transfer any or all of the Shares to one or more Permitted Transferees; provided, however, that following such transfer, such Shares shall continue to be subject to the terms of this Plan (including this Section 9) and such Permitted Transferee(s) shall, as a condition to any such transfer, deliver a written acknowledgment to that effect to the Company and shall deliver a stock power to the Company with respect to the Shares. Notwithstanding the foregoing, the Holder may not transfer any of the Shares to a Person whom the Company reasonably determines is a direct competitor or a potential competitor of the Company or any of its Subsidiaries.

 

(B)            Transfers Upon Death. Upon the death of the Holder, any Shares then held by the Holder at the time of such death and any Shares acquired after the Holder’s death by the Holder’s legal representative shall be subject to the provisions of this Plan, and the Holder’s estate, executors, administrators, personal representatives, heirs, legatees and distributees shall be obligated to convey such Shares to the Company or its assigns under the terms contemplated by the Plan and the Award Agreement.

 

(b)            Right of First Refusal. In the event that a Holder desires at any time to sell or otherwise transfer all or any part of his or her Shares (other than shares of Restricted Stock which by their terms are not transferrable), the Holder first shall give written notice to the Company of the Holder’s intention to make such transfer. Such notice shall state the number of Shares that the Holder proposes to sell (the “Offered Shares”), the price and the terms at which the proposed sale is to be made and the name and address of the proposed transferee. At any time within 30 days after the receipt of such notice by the Company, the Company or its assigns may elect to purchase all or any portion of the Offered Shares at the price and on the terms offered by the proposed transferee and specified in the notice. The Company or its assigns shall exercise this right by mailing or delivering written notice to the Holder within the foregoing 30- day period. If the Company or its assigns elect to exercise its purchase rights under this Section 9(b), the closing for such purchase shall, in any event, take place within 45 days after the receipt by the Company of the initial notice from the Holder. In the event that the Company or its assigns do not elect to exercise such purchase right, or in the event that the Company or its assigns do not pay the full purchase price within such 45-day period, the Holder may, within 60 days thereafter, sell the Offered Shares to the proposed transferee and at the same price and on the same terms as specified in the Holder’s notice. Any Shares not sold to the proposed transferee shall remain subject to the Plan. If the Holder is a party to any stockholders agreements or other agreements with the Company and/or certain other of the Company’s stockholders relating to the Shares, (i) the transferring Holder shall comply with the requirements of such stockholders agreements or other agreements relating to any proposed transfer of the Offered Shares, and (ii) any proposed transferee that purchases Offered Shares shall enter into such stockholders agreements or other agreements with the Company and/or certain of the Company’s stockholders relating to the Offered Shares on the same terms and in the same capacity as the transferring Holder.

 

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(c) Company’s Right of Repurchase.

 

(i)            Right of Repurchase for Unvested Shares Issued Upon the Exercise of an Option. Upon a Termination Event, the Company or its assigns shall have the right and option to repurchase from a Holder of Shares acquired upon exercise of a Stock Option which are still subject to a risk of forfeiture as of the Termination Event. Such repurchase rights may be exercised by the Company within the later of (A) six months following the date of such Termination Event or (B) seven months after the acquisition of Shares upon exercise of a Stock Option. The repurchase price shall be equal to the lower of the original per share price paid by the Holder, subject to adjustment as provided in Section 3(b) of the Plan, or the current Fair Market Value of such Shares as of the date the Company elects to exercise its repurchase rights.

 

(ii)           Right of Repurchase With Respect to Restricted Stock. Upon a Termination Event, the Company or its assigns shall have the right and option to repurchase from a Holder of Shares received pursuant to a Restricted Stock Award any Shares that are still subject to a risk of forfeiture as of the Termination Event. Such repurchase right may be exercised by the Company within six months following the date of such Termination Event. The repurchase price shall be the lower of the original per share purchase price paid by the Holder, subject to adjustment as provided in Section 3(b) of the Plan, or the current Fair Market Value of such Shares as of the date the Company elects to exercise its repurchase rights.

 

(iii)          Procedure. Any repurchase right of the Company shall be exercised by the Company or its assigns by giving the Holder written notice on or before the last day of the repurchase period of its intention to exercise such repurchase right. Upon such notification, the Holder shall promptly surrender to the Company, free and clear of any liens or encumbrances, any certificates representing the Shares being purchased, together with a duly executed stock power for the transfer of such Shares to the Company or the Company’s assignee or assignees. Upon the Company’s or its assignee’s receipt of the certificates from the Holder, the Company or its assignee or assignees shall deliver to him, her or them a check for the applicable repurchase price; provided, however, that the Company may pay the repurchase price by offsetting and canceling any indebtedness then owed by the Holder to the Company.

 

(d)            Drag Along Right. In the event the holders of a majority of the Company’s equity securities then outstanding (the “Majority Shareholders”) determine to enter into a Sale Event in a bona fide negotiated transaction (a “Sale”), with any non-Affiliate of the Company or any majority shareholder (in each case, the “Buyer”), a Holder of Issued Shares, including any Permitted Transferees, shall be obligated to and shall upon the written request of the Majority Shareholders: (a) sell, transfer and deliver, or cause to be sold, transferred and delivered, to the Buyer, his or her Issued Shares (including for this purpose all of such Holder’s or his or her Permitted Transferee’s Issued Shares that presently or as a result of any such transaction may be acquired upon the exercise of an Option (following the payment of the exercise price therefor)) on substantially the same terms applicable to the Majority Shareholders (with appropriate adjustments to reflect the conversion of convertible securities, the redemption of redeemable securities and the exercise of exercisable securities as well as the relative preferences and priorities of preferred stock); and (b) execute and deliver such instruments of conveyance and transfer and take such other action, including voting such Issued Shares in favor of any Sale proposed by the Majority Shareholders and executing any purchase agreements, merger agreements, indemnity agreements, escrow agreements or related documents as the Majority Shareholders or the Buyer may reasonably require in order to carry out the terms and provisions of this Section 7(d).

 

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(e) Escrow Arrangement.

 

(i)            Escrow. In order to carry out the provisions of this Section 9 of this Plan more effectively, the Company shall hold any Shares issued pursuant to Awards granted under the Plan in escrow together with separate stock powers executed by the Holder in blank for transfer. The Company shall not dispose of the Shares except as otherwise provided in this Plan. In the event of any repurchase by the Company (or any of its assigns), the Company is hereby authorized by the Holder, as the Holder’s attorney-in-fact, to date and complete the stock powers necessary for the transfer of the Shares being purchased and to transfer such Shares in accordance with the terms hereof. At such time as any Shares are no longer subject to the Company’s repurchase and first refusal rights, the Company shall, at the written request of the Holder, deliver to the Holder a certificate representing such Shares with the balance of the Shares to be held in escrow pursuant to this Section.

 

(ii)            Remedy. Without limitation of any other provision of this Plan or other rights, in the event that a Holder or any other Person is required to sell a Holder’s Shares pursuant to the provisions of Sections 9(b) or (c) hereof and in the further event that he or she refuses or for any reason fails to deliver to the Company or its designated purchaser of such Shares the certificate or certificates evidencing such Shares together with a related stock power, the Company or such designated purchaser may deposit the applicable purchase price for such Shares with a bank designated by the Company, or with the Company’s independent public accounting firm, as agent or trustee, or in escrow, for such Holder or other Person, to be held by such bank or accounting firm for the benefit of and for delivery to him, her, them or it, and/or, in its discretion, pay such purchase price by offsetting any indebtedness then owed by such Holder as provided above. Upon any such deposit and/or offset by the Company or its designated purchaser of such amount and upon notice to the Person who was required to sell the Shares to be sold pursuant to the provisions of Sections 9(b) or (c), such Shares shall at such time be deemed to have been sold, assigned, transferred and conveyed to such purchaser, such Holder shall have no further rights thereto (other than the right to withdraw the payment thereof held in escrow, if applicable), and the Company shall record such transfer in its stock transfer book or in any appropriate manner.

 

(f)            Lockup Provision. If requested by the Company, a Holder shall not sell or otherwise transfer or dispose of any Shares (including, without limitation, pursuant to Rule 144 under the Securities Act) held by him or her for such period following the effective date of a public offering by the Company of Shares as the Company shall specify reasonably and in good faith. If requested by the underwriter engaged by the Company, each Holder shall execute a separate letter confirming his or her agreement to comply with this Section.

 

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(g)            Adjustments for Changes in Capital Structure. If, as a result of any reorganization, recapitalization, reclassification, stock dividend, stock split, reverse stock split or other similar change in the Common Stock, the outstanding Shares are increased or decreased or are exchanged for a different number or kind of securities of the Company, the restrictions contained in this Section 9 shall apply with equal force to additional and/or substitute securities, if any, received by Holder in exchange for, or by virtue of his or her ownership of, Shares.

 

(h)            Termination. The terms and provisions of Section 9(b) and Section 9(c) (except for the Company’s right to repurchase Shares still subject to a risk of forfeiture upon a Termination Event) shall terminate upon the closing of the Company’s Initial Public Offering or upon consummation of any Sale Event, in either case as a result of which Shares are registered under Section 12 of the Exchange Act and publicly-traded on any national security exchange.

 

SECTION 9. TAX WITHHOLDING

 

(a)            Payment by Grantee. Each grantee shall, no later than the date as of which the value of an Award or of any Shares or other amounts received thereunder first becomes includable in the gross income of the grantee for income tax purposes, pay to the Company, or make arrangements satisfactory to the Committee regarding payment of, any Federal, state, or local taxes of any kind required by law to be withheld by the Company with respect to such income. The Company and any Subsidiary shall, to the extent permitted by law, have the right to deduct any such taxes from any payment of any kind otherwise due to the grantee. The Company’s obligation to deliver stock certificates (or evidence of book entry) to any grantee is subject to and conditioned on any such tax withholding obligations being satisfied by the grantee.

 

(b)            Payment in Stock. The Company’s minimum required tax withholding obligation may be satisfied, in whole or in part, by the Company withholding from Shares to be issued pursuant to an Award a number of Shares having an aggregate Fair Market Value (as of the date the withholding is effected) that would satisfy the minimum withholding amount due.

 

SECTION 10. SECTION 409A AWARDS.

 

To the extent that any Award is determined to constitute “nonqualified deferred compensation” within the meaning of Section 409A (a “409A Award”), the Award shall be subject to such additional rules and requirements as may be specified by the Committee from time to time. In this regard, if any amount under a 409A Award is payable upon a “separation from service” (within the meaning of Section 409A) to a grantee who is considered a “specified employee” (within the meaning of Section 409A), then no such payment shall be made prior to the date that is the earlier of (i) six months and one day after the grantee’s separation from service, or (ii) the grantee’s death, but only to the extent such delay is necessary to prevent such payment from being subject to interest, penalties and/or additional tax imposed pursuant to Section 409A. The Company makes no representation or warranty and shall have no liability to any grantee under the Plan or any other Person with respect to any penalties or taxes under Section 409A that are, or may be, imposed with respect to any Award.

 

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SECTION 11. AMENDMENTS AND TERMINATION

 

The Board may, at any time, amend or discontinue the Plan and the Committee may, at any time, amend or cancel any outstanding Award for the purpose of satisfying changes in law or for any other lawful purpose, but no such action shall adversely affect rights under any outstanding Award without the consent of the holder of the Award. The Committee may exercise its discretion to reduce the exercise price of outstanding Stock Options or effect repricing through cancellation of outstanding Stock Options and by granting such holders new Awards in replacement of the cancelled Stock Options. To the extent determined by the Committee to be required either by the Code to ensure that Incentive Stock Options granted under the Plan are qualified under Section 422 of the Code or otherwise, Plan amendments shall be subject to approval by the Company stockholders entitled to vote at a meeting of stockholders. Nothing in this Section 12 shall limit the Board’s or Committee’s authority to take any action permitted pursuant to Section 3(c). The Board reserves the right to amend the Plan and/or the terms of any outstanding Stock Options to the extent reasonably necessary to comply with the requirements of the exemption pursuant to paragraph (f)(4) of Rule 12h-1 of the Exchange Act.

 

SECTION 12. STATUS OF PLAN

 

With respect to the portion of any Award that has not been exercised and any payments in cash, Stock or other consideration not received by a grantee, a grantee shall have no rights greater than those of a general creditor of the Company unless the Committee shall otherwise expressly so determine in connection with any Award.

 

SECTION 13. GENERAL PROVISIONS

 

(a)            No Distribution; Compliance with Legal Requirements. The Committee may require each person acquiring Shares pursuant to an Award to represent to and agree with the Company in writing that such person is acquiring the Shares without a view to distribution thereof. No Shares shall be issued pursuant to an Award until all applicable securities law and other legal and stock exchange or similar requirements have been satisfied. The Committee may require the placing of such stop-orders and restrictive legends on certificates for Stock and Awards as it deems appropriate.

 

(b)            Delivery of Stock Certificates. Stock certificates to grantees under the Plan shall be deemed delivered for all purposes when the Company or a stock transfer agent of the Company shall have mailed such certificates in the United States mail, addressed to the grantee, at the grantee’s last known address on file with the Company; provided that stock certificates to be held in escrow pursuant to Section 9 of the Plan shall be deemed delivered when the Company shall have recorded the issuance in its records. Uncertificated Stock shall be deemed delivered for all purposes when the Company or a stock transfer agent of the Company shall have given to the grantee by electronic mail (with proof of receipt) or by United States mail, addressed to the grantee, at the grantee’s last known address on file with the Company, notice of issuance and recorded the issuance in its records (which may include electronic “book entry” records).

 

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(c)            No Employment Rights. The adoption of the Plan and the grant of Awards do not confer upon any Person any right to continued employment or Service Relationship with the Company or any Subsidiary.

 

(d)           Trading Policy Restrictions. Option exercises and other Awards under the Plan shall be subject to the Company’s insider trading policy-related restrictions, terms and conditions as may be established by the Committee, or in accordance with policies set by the Committee, from time to time.

 

(e)            Designation of Beneficiary. Each grantee to whom an Award has been made under the Plan may designate a beneficiary or beneficiaries to exercise any Award on or after the grantee’s death or receive any payment under any Award payable on or after the grantee’s death. Any such designation shall be on a form provided for that purpose by the Committee and shall not be effective until received by the Committee. If no beneficiary has been designated by a deceased grantee, or if the designated beneficiaries have predeceased the grantee, the beneficiary shall be the grantee’s estate.

 

(f)            Legend. Any certificate(s) representing the Shares shall carry substantially the following legend (and with respect to uncertificated Stock, the book entries evidencing such shares shall contain the following notation):

 

The transferability of this certificate and the shares of stock represented hereby are subject to the restrictions, terms and conditions (including repurchase and restrictions against transfers) contained in the 908 Devices Inc. 2012 Stock Option and Grant Plan and any agreements entered into thereunder by and between the company and the holder of this certificate (a copy of which is available at the offices of the company for examination).

 

(g)            Information to Holders of Options. In the event the Company is relying on the exemption from the registration requirements of Section 12(g) of the Exchange Act contained in paragraph (f)(1) of Rule 12h-1 of the Exchange Act, the Company shall provide the information described in Rule 701(e)(3), (4) and (5) of the Securities Act to all holders of Options in accordance with the requirements thereunder. The foregoing notwithstanding, the Company shall not be required to provide such information unless the optionholder has agreed in writing, on a form prescribed by the Company, to keep such information confidential.

 

SECTION 14. EFFECTIVE DATE OF PLAN

 

The Plan shall become effective upon adoption by the Board and shall be approved by stockholders in accordance with applicable state law and the Company’s articles of incorporation and bylaws within 12 months thereafter. If the stockholders fail to approve the Plan within 12 months after its adoption by the Board of Directors, then any Awards granted or sold under the Plan shall be rescinded and no additional grants or sales shall thereafter be made under the Plan. Subject to such approval by stockholders and to the requirement that no Shares may be issued hereunder prior to such approval, Stock Options and other Awards may be granted hereunder on and after adoption of the Plan by the Board. No grants of Stock Options and other Awards may be made hereunder after the tenth anniversary of the date the Plan is adopted by the Board or the date the Plan is approved by the Company’s stockholders, whichever is earlier.

 

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SECTION 15. GOVERNING LAW

 

This Plan, all Awards and any controversy arising out of or relating to this Plan and all Awards shall be governed by and construed in accordance with the General Corporation Law of the State of Delaware as to matters within the scope thereof, and as to all other matters shall be governed by and construed in accordance with the internal laws of the Commonwealth of Massachusetts, without regard to conflict of law principles that would result in the application of any law other than the law of the Commonwealth of Massachusetts.

 

DATE ADOPTED BY THE BOARD OF DIRECTORS:   June 12, 2012

 

DATE APPROVED BY THE STOCKHOLDERS:   June 12, 2012

 

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Exhibit 10.6

 

AMENDED AND RESTATED

EXCLUSIVE LICENSE AGREEMENT

 

This Amended and Restated Exclusive License Agreement (the ‘‘Agreement”) is entered into as of this 20th day of May, 2015 (the “Restatement Effective Date”) between The University of North Carolina at Chapel Hill having an address at 100 Europa Drive, Suite 430, Chapel Hill, North Carolina, 27517 (“University”) and 908 Devices Inc., a corporation organized and existing under the laws of the State of Delaware having its principal office/place of business at 27 Drydock Ave., 7th Floor, Boston, MA 02210 (the “Licensee”).

 

WITNESSETH

 

WHEREAS, University owns and controls valuable inventions listed in Appendix A, including an invention jointly owned by the University of Arizona (“UA”) and University jointly own a valuable invention known as ‘‘Microfabricated Ionization Source,” University File No. 12-0142 and “A Microfabricated Ionizer Chip,” UA File No. 12-077 (“UNC-UA Invention”) (collectively “Invention” or “Inventions”); and

 

WHEREAS, the Inventions were developed by J. Michael Ramsey and others while employees, students, or postdoctoral fellows of University and Stanley Pau of UA; and

 

WHEREAS, University and UA have entered into an inter-institutional agreement effective June 6, 2012 wherein UA has granted University an exclusive license, with the right to sublicense, to its rights in UNC-UA Invention for the sole purpose of University entering into this agreement with Licensee and the exclusive right to manage patenting and licensing of UNC-UA Invention; and

 

WHEREAS, University exclusively controls all right, title and interest in the Invention and the Patent Rights and Copyrights; and

 

WHEREAS, University desired to license its rights in the Invention in a manner that will benefit the public and best facilitate the distribution of useful products and the utilization of new processes; and

 

WHEREAS, Licensee is a University start-up company and has at least one University faculty member as a founder; and

 

WHEREAS, Licensee has submitted a development plan indicating Licensee’s strategies to develop and commercialize the technology and University has determined, based upon such business plan, that granting a license to its rights in the Invention to Licensee will benefit the public and best facilitate the distribution of useful products and the utilization of new processes; and

 

WHEREAS, Licensee and University entered into an Exclusive License Agreement dated June 6, 2012, which was amended by Amendment No. 1 to Exclusive License Agreement with an effective date of April 23, 2013, and by Amendment No. 2 to Exclusive License Agreement dated August 12, 2014 (as so amended, the “Original Agreement”);

 

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WHEREAS, Licensee and University desire to amend and restate the Original Agreement; and

 

NOW, THEREFORE, in consideration of the premises and mutual promises and covenants contained in this Agreement and for good and valuable consideration, including the payment by Licensee to University of an Option Fee in the amount of $30,000.00 upon execution of this Agreement, it is agreed by and between University and Licensee as follows:

 

ARTICLE 1: DEFINITIONS

 

1.1       “Affiliate” means every entity, which directly or indirectly, or through one or more intermediaries, controls, is controlled by, or is under common control with Licensee. An entity is deemed to be in control of another corporation or entity if (a) it owns or directly or indirectly controls at least 50% of the voting stock of the other corporation or (b) in the absence of ownership of at least 50% of the voting stock of a corporation, or in the case of a non-corporate entity, if it possesses directly or indirectly, the power to direct or cause the direction of the management and policies of such entity.

 

1.2       “Combination Product” means any product that is comprised of a combination of (i) a Licensed Product and (ii) any active ingredient(s), device(s), delivery system(s) or other technology(ies) for which rights are not included in the License but, with respect to the item(s) in (ii), which may each or collectively form the basis for a separately saleable product.

 

1.3       “Compulsory Royalty” shall have the meaning set forth in Section 3.9.

 

1.4       “Confidential Information” means any information disclosed by one party to the other party which is identified as confidential at the time of disclosure, including information consisting of data; research results; technology; software; materials; patents; copyrighted works; know-how; business or product plans; marketing, sales or other financial information; Progress Reports; Royalty Reports; and Improvements.

 

1.5       “Copyrights” means any software, computer programs, documentation, algorithms, or other materials subject to copyright protection included in the Invention and listed in Appendix A, which shall be amended from time to time to indicate the then current Copyrights.

 

1.6       “Equity Securities” means any capital shares of Licensee (including without limitation common and preferred shares), and any securities of Licensee that are convertible into any capital shares of Licensee.

 

1.7       “Exchange Consideration” shall have the meaning set forth in Section 3.6.

 

1.8       “Existing Patent Rights” means Patent Rights that claim or cover the Inventions listed in Appendix A as of the Restatement Effective Date, including patent applications that claim or cover such Inventions that may be prepared and filed after the Restatement Effective Date, provided that with respect to Inventions listed in Appendix A labeled “none pending,” the foregoing applies only to the extent that University owns or controls such rights.

 

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1.9       “Fully Diluted Basis” means all of Licensee’s Equity Securities either outstanding or reserved for issuance, assuming the exercise of all options, warrants and other convertible securities and the conversion of all preferred stock and convertible debt instruments and assuming the grant of all shares reserved under any equity incentive or similar plans.

 

1.10       “Improvement” means any and all inventions either:

 

(i) relating to microscale mass spectrometry made on or prior to June 6, 2015 that (1) are not Patent Rights or Copyrights, (2) were conceived of or reduced to practice at University in the laboratory of J. Michael Ramsey, (3) have been disclosed to University’s Office of Technology Development, and (4) are not obligated to any third party under a separate agreement,

 

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(ii) arising out of research sponsored by Licensee in the laboratory of J. Michael Ramsey and disclosed to University’s Office of Technology Development.

 

1.1l       “Invention” means inventions listed in Appendix A,

 

1.12       “Joint Inventions” means inventions that are made jointly by University and Licensee or any of their respective officers, employees, contractors or students.

 

1.13       “Licensed Field” means, and is limited to, the practice of the Invention and any Improvements for chemical and biochemical analysis.

 

1.14       “Licensed Products” means any method or process, composition, product, or component part thereof covered in whole or in part by a Valid Claim within the Patent Rights or covered by the Copyrights.

 

(i) MMS Licensed Products means a Licensed Product covered by Valid Claims of Patent Rights for use in micro mass spectrometry and designated as such in Appendix A and B

 

(ii) LPS Licensed Products means a Licensed Product covered by Valid Claims of Patent Rights for use in liquid phase separation and designated as such in Appendix A and B

 

1.15       “Licensed Territory” means the entire world.

 

1.16       “Limited Licensed Field” means, and is limited to, the practice of the Invention for chemical and biochemical analysis.

 

1.17       “Limited Patent Rights” shall be identified in Appendices A and B under the respective “Patent Rights” headings as that subset of Patent Rights for which the license granted is limited to Section 2.1 (iii). Patent prosecution expenses will be shared pro rata with all non-exclusive licensees.

 

1.18       “Net Sales” means the total invoiced sales price for Licensed Products sold by Licensee or an Affiliate to customers, wholesalers, distributors and other third parties less (i) sales taxes or other taxes (other than income taxes), (ii) shipping and insurance charges, (iii) actual allowances for returned or defective goods and (iv) trade discounts, but not cash discounts. Licensed Products will be considered sold when billed out, when delivered or when paid for before delivery, whichever first occurs. Notwithstanding the foregoing, Net Sales shall not include, and shall be deemed zero with respect to, (i) the distribution of reasonable quantities of promotional samples of Licensed Products, (ii) Licensed Products provided for clinical trials, research purposes, or charitable or compassionate use purposes.

 

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1.19       “Option” means the option granted under Section 2.4 of this Agreement.

 

1.20       “Option Fee” means ten thousand dollars ($10,000).

 

1.21       “Option Period” means the period of ninety (90) days after Licensee’s receipt of written notification of an Improvement from University’s Office of Technology Development.

 

1.22       “Option Term” means three (3) years after the Original Effective Date which shall be automatically extended so long as Licensee sponsors research in the laboratory of J. Michael Ramsey.

 

1.23       “Original Effective Date” means June 6. 2012.

 

1.24       “Patent Rights” means (i) any United States, foreign or international patents and/or patent applications covering the Invention (or its use or manufacture) owned or controlled by University as of the Original Effective Date or during the term of this Agreement, (ii) any continuations, divisionals, provisionals, continued prosecution applications, substitutions, extensions and term restorations, registrations, confirmations, re-examinations, renewals, or reissues of any of the foregoing, (iii) any foreign counterpart of any of the foregoing, and (iv) continuations-in-part and any foreign counterpart thereof, to the extent any continuations-in-part claim technology is an Improvement and would be incorporated into the Patent Rights pursuant to Section 2.4 but for the limitation included in Section 1.10(i)(l). Patent Rights as of the Restatement Effective Date are listed in Appendix B, which is incorporated herein and shall be amended from time to time to include Existing Patent Rights and the then current Patent Rights.

 

1.25       “Progress Report” means a written report summarizing Licensee’s material technical and other efforts made towards first commercial sale for all Licensed Products under development. Such reports shall include, without limitation, reasonably detailed summaries of (i) development and commercialization of Licensed Products, (ii) collaborations with third parties and sublicensing efforts, (iii) progress toward completing milestones described on Appendix C, (iv) key management changes and total number of employees, (v) Licensee’s finances, (vi) scientific and business goals for the next year, (vii) summary of any payments due under Article 3, and (viii) any other company information which may materially impact Licensee’s ability to develop Licensed Product.

 

1.26       “Royalty Report” means a written report detailing the number, description, aggregate selling prices, and Net Sales of Licensed Products (and a listing of the relevant Patent Rights and Copyrights where the Licensed Product is covered by less than all of the Patent Rights or Copyrights) sold or otherwise disposed of in each calendar quarter upon which royalty is payable, the amount of Sublicensing Royalty Revenue received during each calendar quarter, and the royalty payment amounts due under Article 3.

 

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1.27       “Sublicensee” means any third party to whom rights are granted by Licensee (or an Affiliate) with respect to the Patent Rights or Copyrights. “Sublicensee” shall also include any third party to whom such rights are granted through further sublicense by a Sublicensee.

 

1.28       “Sublicensing Revenue” means any consideration actually received by Licensee or an Affiliate from a third party as consideration for the grant of rights to Patent Rights or Copyrights (net of any tax or similar withholding obligations imposed by any tax or other government authority(ies) that are not reasonably recoverable by Licensee). Sublicensing Revenue includes, but is not limited to, upfront fees, license maintenance fees, and milestone payments, or other payments, including the fair market value of any non-cash consideration, received by Licensee in consideration for any rights granted to Patent Rights or Copyrights under a sublicense agreement, and excludes (i) Sublicensing Royalty Revenue, (ii) purchases of equity or debt of Licensee or any Affiliate, (iii) fair market value payments made in connection with research and development agreements, joint ventures, partnerships or collaboration agreements where Licensee or an Affiliate is obligated to perform research, development or commercialization of any Licensed Product(s), (iv) the grant to Licensee of intellectual property rights related to the technology described in the Patent Rights or Copyrights, and (v) other payments made by a Sublicensee as consideration for Licensee’s or an Affiliate’s performance of services or provision of goods, provided such services or goods are not Licensed Products or, if such services or goods are Licensed Products, (a) the provision of such services or goods results in Net Sales pursuant to which a royalty is payable under Section 3.4 or (b) the provision of such services or goods constitutes one or more of the following: (1) the distribution of reasonable quantities of promotional samples of Licensed Products or (2) the provision of Licensed Products for clinical trials, research purposes, or charitable or compassionate use purposes.

 

1.29       “Sublicensing Royalty Revenue” means sales-based royalties, sales milestone payments, other payments calculated on the basis of sales, and minimum sales royalties actually received by Licensee or its Affiliate from a third party as consideration for the grant of rights to Patent Rights or Copyrights (net of any tax or similar withholding obligations imposed by any tax or other government authority(ies) that are not reasonably recoverable by Licensee).

 

1.30       “Valid Claim” means an issued, unexpired, or pending claim contained within the Patent Rights.

 

1.31       Other Definitional Provisions.

 

(i)       The words “hereof”, “herein” and “hereunder” and words of similar import when used in this Agreement shall refer to this Agreement as a whole and not to any particular provision of this Agreement, and section, schedule and exhibit references are to this Agreement unless otherwise specified. The meaning of defined terms shall be equally applicable to the singular and plural forms of the defined terms. The term “including” is not limiting and means “including without limitation”.

 

(ii)       In the computation of periods of time from a specified date to a later specified date, the word “from” means “from and including”; the words “to” and “until” each mean “to but excluding,” and the word “through” means “to and including.”

 

(iii)      References to agreements and other contractual instruments shall be deemed to include all subsequent amendments and other modifications thereto, but only to the extent such amendments and other modifications are not prohibited by the terms of this Agreement.

 

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(iv)      References to statutes or regulations are to be construed as including all statutory and regulatory provisions consolidating, amending or replacing the statute or regulation.

 

(v)       The captions and headings of this Agreement are for convenience of reference only and shall not affect the construction of this Agreement.

 

ARTICLE 2: GRANT OF LICENSE AND OPTION

 

2.1       License. University hereby grants to Licensee and its Affiliates:

 

(i) an exclusive license under the Patent Rights (but excluding the Limited Patent Rights) to make, use, sell, have made, have sold, offer for sale and import Licensed Products in the Licensed Field and Licensed Territory, with the right to sublicense as set forth in Article 6, subject to all the terms and conditions of this Agreement;

 

(ii) an exclusive license under the Copyrights to use, distribute, translate, reproduce, transmit, perform, display, demonstrate, make derivatives or collective works of, modify, adapt, copy and otherwise exploit the Copyrights to create Licensed Products in the Licensed Field and Licensed Territory, with the right to sublicense as set forth in Article 6, subject to all the terms and conditions of this Agreement;

 

(iii) a co-exclusive license with no more than one other licensee under the Limited Patent Rights to make, use, sell, have made, have sold, offer for sale and import Licensed Products in the Limited Licensed Field and Licensed Territory with the right to sublicense as set forth in Article 6, subject to all the terms and conditions of this Agreement.

 

2.2       Reservation of University Rights. University reserve the rights to practice under the Patent Rights and Copyrights for its own internal research, teaching and educational purposes, without payment of royalties, provided that the exercise of such reserved rights by University shall not (a) be for the benefit of any for-profit entity nor (b) include any human use or clinical administration without prior written approval from Licensee, such approval not to be unreasonably withheld. University shall also retain the right to permit other academic and nonprofit research institutions to practice under the Patent Rights and Copyrights for their own internal research, teaching and educational purposes, without payment of royalties, provided that the exercise of such reserved rights by such entities shall not (c) be for the benefit of any for-profit entity nor (d) include any human use or clinical administration.

 

2.3       Government Rights and Requirements. Notwithstanding anything hereunder, any and all licenses and other rights granted hereunder are limited by and subject to the rights and requirements of the United States Government which may arise out of its sponsorship of the research which led to the conception or reduction to practice of the Invention. The United States Government is entitled to the rights provided under the provisions of 35 U.S.C. §§ 200-212 and applicable regulations of Title 37 of the Code of Federal Regulations. Further Licensee agrees, as required by 35 U.S.C. § 204, that any Licensed Products used or sold in the United States shall be substantially manufactured in the United States.

 

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2.4       Time-Limited Option to Improvements, To the extent that it is able to, University hereby grants Licensee an exclusive option to exclusively license University’s rights in Improvements for the period of the Option Term upon the terms and conditions set forth in this Section 2.4. University shall notify Licensee of Improvements within thirty (30) days of University’s Office of Technology Development receipt of invention disclosure describing such Improvements. Such option shall be in effect for each Improvement for the entire Option Period applicable to such Improvement. The Option Term can be extended by mutual agreement of the parties in a written amendment to this Agreement.

 

Licensee may exercise its option to exclusively license University’s rights in each such Improvement upon (i) written notice of such to University and (ii) payment to University in the amount of ten thousand dollars ($10,000) per each Improvement (“Option Fee”) within the Option Period. Within thirty (30) days of University’s receipt of the Option Fee, the parties shall execute a written amendment to this Agreement to include the optioned Improvement in the then current definition of Inventions and Patent Rights.

 

In the event Licensee does not exercise its option under this Section 2.4, Licensee shall have no rights, title or interest in such Improvement.

 

2.5       No Implied Rights. Licensee shall obtain no implied license rights to the Patent Rights or Copyrights. Any rights not expressly granted to Licensee shall be retained by University.

 

2.6       Technology Transfer. Promptly after the Effective Date, University will make available to Licensee data, materials, models and related information that embody or relate to the Invention and that would be reasonably useful for Licensee in the exercise of its rights hereunder. Licensee and University shall cooperate in good faith to facilitate this transfer of material and information, including without limitation, through meetings at the University or at other facilities as the parties may agree.

 

ARTICLE 3: CONSIDERATION

 

3.1       License Fee. As consideration for the License and Option granted under this Agreement, Licensee issued to the University 180,000 shares of common stock of Licensee within ninety (90) days of the Original Effective Date.

 

3.2       Patent Expenses Incurred Prior to Activating the License. Licensee shall bear the cost of all reasonable, documented patent expenses incurred prior to the Original Effective Date and during the Option Period associated with the preparation, filing, prosecuting, issuance and maintenance of all patent applications and patents included within the Patent Rights, and such amounts shall be due to University within thirty (30) days of the first anniversary of the Original Effective Date. The amount owed for patent expenses incurred prior to the Original Effective Date is estimated to be no greater than zero dollars ($0.00). Beginning on the Original Effective Date, the University shall send invoices to Licensee on a monthly basis; such invoices shall indicate the then current amount owed to University for patent expenses incurred prior to the date of such invoice.

 

3.3       Patent Expenses Incurred After Activation of the License. Licensee shall bear the cost of all reasonable, documented patent expenses incurred upon activation of the License, continuing for the life of this Agreement, and associated with the preparation, filing, prosecuting, issuance and maintenance of all patent applications and patents included within the Patent Rights. Said amounts for on-going patent expenses shall be paid to University within thirty (30) days of Licensee’s receipt of an invoice from University; such invoices shall be sent to Licensee on a monthly basis.

 

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[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.

 

3.4       Earned Royalty. Beginning on the Original Effective Date and continuing for the life of this Agreement, Licensee shall pay University a running royalty, equal to the percentage of Net Sales indicated below, of all Licensed Products.

 

[***] [***]
   
[***] [***]
   
[***] [***]
   
[***] [***]

 

 

3.5       Annual License Maintenance Fee. Licensee shall pay an Annual License Maintenance Fee to University in the amount indicated in the Schedule below. Each such Annual License Maintenance Fee payment shall be fully creditable against any payments that would otherwise become due and payable under Section 3.4 or Section 3.6 during the same calendar year in respect of which such Annual License Maintenance Fee is due and payable.

 

Annual License Maintenance Fee Schedule

 

Years   Date Due   Amount  
3rd complete calendar year following the Original Effective Date through the 5th complete calendar year following the Original Effective Date   Each March 15th beginning on March 15, 2015 and continuing through March 15, 2018   $ 15,000  
             
6th complete calendar year following the Original Effective Date and each calendar year thereafter   Each March 15th beginning on March 15, 2018 and continuing throughout the term of this Agreement   $ 30,000  

 

3.6       Sublicense Fees. In respect to sublicenses granted by Licensee under Article 6

 

3.6.1       Licensee shall pay to University an amount equal to [***] of Sublicensing Revenue within 30 days of Licensee’s receipt of Sublicensing Revenue; and

 

3.6.2       Licensee shall pay to University an amount equal to [***] of Sublicensing Royalty Revenue provided that, notwithstanding the foregoing, the total payment due University under this Section 3.6.2 with respect to Sublicensing Royalty Revenue during any particular quarter shall not, in any event, exceed an amount equal to the royalties that would have been due to University with respect to the Licensed Products had Licensee itself sold such Licensed Product, based on such Sublicensee’s net sales of such Licensed (determined in a manner substantially similar to the manner in which Net Sales are determined under this Agreement for Licensee’s sales of Licensed Products) and calculated in a manner consistent with Sections 3.4, 3.7, 3.8, and 3.9. Any such payments shall be made concurrently with the submission of Royalty Reports as set forth in Section 4.2.

 

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Licensee shall not sell or transfer to a third party Licensee’s interest in all or a portion of any future Sublicensing Revenue and/or Sublicensing Royalty Revenue under such sublicense agreement(s) in exchange for a single cash payment or series of cash payments (the “Exchange Consideration”) without the prior written approval of University, such approval not to be unreasonably withheld. In the event that University approves such sale or transfer, (a) the portion of any Exchange Consideration reasonably allocated by Licensee to the value of its interest in such future Sublicensing Revenue shall be treated as Sublicensing Revenue for purposes of this Section 3.6 and (b) the portion of any such Exchange Consideration reasonably allocated by Licensee to the value of its interest in such future Sublicensing Royalty Revenue shall be treated as Sublicensing Royalty Revenue for purposes of this Section 3.6. For the avoidance of doubt, to the extent Exchange Consideration has been allocated to the value of Licensee’s interest in future Sublicensing Revenue or Sublicensing Royalty Revenue, any such Sublicensing Revenue or Sublicensing Royalty Revenue shall thereafter not be included within the definitions of Sublicensing Revenue or Sublicensing Royalty Revenue originally established in Article 1.

 

3.7       Royalty Stacking. In the event that Licensee is required to pay royalties pursuant to one or more licenses to intellectual property rights entered into by Licensee for use in connection with the manufacture, use, or sale of any Licensed Product, or to avoid infringement-related litigation with respect to the practice of the Patent Rights, then Licensee may deduct an amount equal to fifty percent (50%) of such third party royalties from any royalty amounts due University hereunder, provided that in no event shall the royalties otherwise due University be less than fifty percent (50%) of the royalties that would be payable to University absent the effects of this Section 3.7.

 

3.8       Combination Product. If a Licensed Product is sold as part of a Combination Product, Net Sales shall be calculated by multiplying Net Sales for such Combination Product by the fraction A/(A+B) where A is the invoice price of the Licensed Product when sold separately, and B is the aggregate invoice price of the independent subproduct(s) in the combination when sold separately. If either the Licensed Product or the independent subproduct(s) is(are) not at that time sold separately, than the allocation of Net Sales shall be commercially reasonable and determined by good faith negotiation between University and Licensee, based on the relative value of the Licensed Product and independent subproduct(s), consistent with the formula provided above.

 

3.9       Compulsory Licensing. Should a compulsory license be granted, or be the subject of a possible grant, by Licensee or an Affiliate to a third party under the applicable laws, rules, regulations, guidelines, or other directives of any governmental or supranational agency in the Licensed Territory under the Patent Rights, Licensee shall notify University, including any material information concerning such compulsory license, and the running royalty rates payable under Section 3.4 for sales of Licensed Products in such country will be adjusted to equal any lower royalty rate granted to such third party for such country with respect to the sales of such Licensed Products therein (the “Compulsory Royalty”).

 

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[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.

 

3.10     Inventions. As between the parties, inventorship of new inventions made after the Original Effective Date, including Improvements, shall be determined in accordance with U.S. law and ownership shall follow inventorship. All fees, royalties, and other payments due to University under this Agreement shall be made in United States Dollars. If any currency conversion shall be required in connection with the payment of royalties hereunder, such conversion shall be made using the exchange rate published in the Wall Street Journal on the last business day of the calendar quarterly reporting period to which such royalty payments relate. If payments are made by check, check shall be made to “The University of North Carolina at Chapel Hill” and shall be sent to “License Administrator” at University mailing address pursuant to Section 13.6. If Licensee elects to make payments by wire, Licensee shall pay all fees associated with processing the wired payment and shall follow the wire instructions below:

 

Bank Name: Bank of America, NA
Address: 100 West 33rd Street
  New York, NY 10001, USA
ABA Number: [***]
  [***]
Account Number: [***]
Account Name: UNC-CH Endowment, Trust & Special Funds
Type of Account: Depository
Incoming Foreign Wires Should Include: Swift (BIC) # BOFAUS3N
Contact #: 800-715-1000 ext 21598

 

Note: All incoming wires shall specify “The Office of Technology Development” and “UNC ref. No. 09-0096”.

 

3.11       In the event royalty payments or fees are not received by University when due, Licensee shall pay to University default interest on such unpaid amount at a rate equal to interest and charges at the lower of (a) the then-current prime lending rate as published by the American East Coast edition of the Wall Street Journal or (b) the maximum rate of interest allowed by law on the total royalties or fees overdue.

 

3.12       In the event of default in payment of any payment owing to University under the terms of this Agreement, and if it becomes necessary for University to undertake legal action to collect said payment, Licensee shall pay reasonable, documented legal fees and costs incurred by University in connection therewith.

 

ARTICLE 4 REPORTS AND RECORDS

 

4.1       Licensee shall submit a Progress Report to University on or before March 15th of each calendar year after the Original Effective Date and continuing throughout the life of this Agreement. Progress Reports are subject to the confidentiality obligations of Article 12.

 

4.2       Licensee shall submit Royalty Reports to University beginning the quarter during which the first commercial sale of Licensed Product is made and continuing throughout the life of this Agreement according to the following schedule:

 

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Quarterly Royalty Report Schedule

 

Reporting Quarter Report Due Date

1st Quarter (January, February, March) June 15th
2nd Quarter (April, May, June) September 15tb
3rd Quarter (July, August, September) December 15th
4th Quarter (October, November, December) March 15th (following year)

 

Reports shall specify whether royalties are being remitted for MMS Licensed Products or LPS Licensed Products,

 

4.3       Licensee shall keep complete, true and accurate books of account and records for the purpose of showing the derivation of all amounts payable to University under this Agreement. Such books and records shall be kept at Licensee’s principal place of business during the term of this Agreement, and for three (3) years from the date of the last sale of Licensed Product, and shall be open at all reasonable times for inspection by a representative of University for the purpose of verifying Licensee’s royalty statements or Licensee’s compliance in other respects with this Agreement. The University representative shall be obliged to treat as confidential all relevant matters.

 

4.4       Inspections made under Section 4.3 shall be at the expense of University, unless an underpayment to University under this Agreement exceeding the greater of (i) five thousand dollars ($5,000) or (ii) five percent (5%) of the amount properly due with respect to the audited period is discovered in the course of any such inspection, whereupon all reasonable, documented costs relating thereto shall be paid by Licensee. Licensee shall promptly pay to University the full amount of any such underpayment, together with interest thereon as specified in Article 3.

 

ARTICLE 5: DUE DILIGENCE

 

5.1       Licensee must diligently pursue the development and commercialization of Licensed Products, which shall include production of Licensed Products for testing and development, governmental approval where applicable, and sale. The acts of Affiliates, Sublicensees, and third party contractors shall be deemed the acts of Licensee for purposes of satisfying this Section 5.1.

 

5.2       Licensee shall achieve the performance milestones set forth in Appendix C, which is incorporated herein, on the time frames indicated. The parties acknowledge that the dates or timelines outlined or established for the achievement of such milestones assume that product candidates do not encounter regulatory or other delays for reasons outside of Licensee’s reasonable control. Licensee and University shall negotiate in good faith the extension of these dates in the event that, despite the use by Licensee of commercially reasonable efforts, Licensee fails to achieve any stated milestones by the dates or timelines outlined or established therefore. Notwithstanding the foregoing, Licensee shall have the right to extend the deadline one time for each milestones set forth in Appendix C for a period of twelve additional months by written notice to University and upon payment of fifty thousand dollars ($50,000) thirty (30) days prior to the due date of such milestone. Such payment shall not be refundable nor creditable toward any other amounts owed by Licensee under this Agreement. University’s sole and exclusive remedy with respect to Licensee’s breach of this Article 5 shall be its right to terminate this Agreement in accordance with Section 7.3.

 

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ARTICLE 6: SUBLICENSING

 

6.1       Licensee may sublicense any and all rights licensed hereunder, with such rights including the right to permit Sublicensees to further sublicense such rights. Licensee shall notify University in writing and provide University with a copy of each sublicense agreement entered into by Licensee granting Sublicensee rights to any and all rights licensed hereunder and each amendment thereto within thirty (30) days after its execution.

 

6.2       Licensee shall not grant sublicenses to the rights granted hereunder for no consideration or solely in exchange for the grant to Licensee of intellectual property rights unrelated to the technology described in the Patent Rights or Copyrights.

 

6.3       Licensee shall require that any agreement granting a third party rights to the Patent Rights or Copyrights:

 

(i)       be consistent with the terms, conditions and limitations of this Agreement;

 

(ii)       contain an acknowledgment by the Sublicensee of University’s disclaimer of warranty and limitation on University’s liability substantially similar to those provided by Article 10;

 

(iii)       shall require Sublicensee to indemnify University with respect to such Sublicensee’s exercise of its rights under the Patent Rights or Copyrights in a manner substantially similar to the manner in which Licensee has agreed to indemnify University under Section 11.1;

 

(iv)       comply with Sections 2.3, 13.11 and 13.12 of this Agreement.

 

If any sublicense agreement granting any rights to the Patent Rights or Copyrights does not comport with above requirements, then that agreement shall be invalid and unenforceable.

 

6.4       University agrees that, to the extent provided for in each sublicense granted under this Agreement and so long as such sublicense does not impose any obligations on University in excess of those imposed on University herein, all sublicenses granted with respect to the rights granted under this Agreement shall survive termination of this Agreement and will automatically be assigned to University upon such termination, in order to provide for the applicable Sublicensee’s continued enjoyment of its rights thereunder.

 

6.5       Licensee shall be responsible to University for the performance of its Sublicensees under each sublicense agreement granting rights to any Patent Rights or Copyrights.

 

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6.6       After the third anniversary of the Original Effective Date, University shall provide written notice to Licensee of any request made by a third party to develop a product requiring use of the Patent Rights or Copyrights (a “Proposed Product”) within fifteen (15) days of receiving such request.

 

6.6.1       In the event that such Proposed Product has not been identified as under development in a Progress Report, then within thirty (30) days of receiving from or providing to University such written notice of a third party request for a sublicense, Licensee shall elect one of the following options:

 

(i) Provide University with written notice in the form of a Progress Report that Licensee, Affiliate or Sublicensee of either of the foregoing has initiated commercially reasonable efforts to develop, make, use and sell a Licensed Product that is essentially the same as or would commercially compete with the Proposed Product; or

 

(ii) Provide University with written notice in the form of a Progress Report that Licensee, Affiliate or Sublicensee of either of the foregoing has plans to initiate commercially reasonable efforts, within eighteen (18) months of the date said written notice is due University, to develop, make, use and sell a Licensed Product that is essentially the same as or would commercially compete with the Proposed Product; or

 

(iii) Begin good faith negotiations with such third party to sublicense Licensee’s rights in the Patent Rights or Copyrights that are necessary or commercially justifiable for such third party to make, use and sell Proposed Product; or

 

(iv) Grant back to University limited rights in the Patent Rights under this Agreement for the sole purpose of allowing University to sublicense the Patent Rights or Copyrights that are necessary or commercially justifiable for such third party to make, use and sell Proposed Product.

 

6.6.2       If Licensee elects to negotiate with prospective sublicensee for a sublicense to develop, make, use and sell the Proposed Product as provided for in Section 6.6.1 (iii), Licensee shall make a good faith effort to complete negotiations with the prospective sublicensee within one hundred and eighty (180) days from the date on which it began negotiations. For the purposes of this Section 6.6.2, Licensee shall have made a good faith effort to complete negotiations if it has offered a sublicense to the prospective sublicensee the terms of which include:

 

(i) reasonable financial terms taking into account the field in which the sublicense is being offered and Licensee’s obligations to University pursuant to this Agreement,

 

(ii) minimum performance requirements which would not be unreasonably burdensome upon the prospective sublicensee, and

 

(iii) non-financial terms which are consistent with Licensee ‘s obligations to University under this Agreement.

 

6.6.3       Within thirty days of the end of the one hundred and eighty (180) day negotiation period, Licensee shall:

 

(i) provide University a copy of the fully executed sublicense with such third party, or

 

(ii) meet with University representatives and provide documentation of reasons that (a) Licensee and/or such third party chose not to proceed with good faith negotiation or (b) negotiations between Licensee and such third party failed.

 

6.6.4       In the event that Licensee fails to make a good faith effort as required by Section 6.6.2 and such third party still desires to develop, make use and sell Proposed Product, Licensee shall immediately grant back to University limited rights in its rights in the Patent Rights or Copyrights under this Agreement for the sole purpose of University sublicensing such rights to the third party.

 

6.7       Upon reasonable request by University, Licensee shall meet with University and discuss in good faith an agreement to grant a third party a license to make, use and sell Licensed Product solely for use in the developing world (as defined by the World Bank); however, Licensee retains discretion regarding whether to grant any such license.

 

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ARTICLE 7: TERM AND TERMINATION

 

7.1       Any license granted pursuant to Article 2 is exclusive for a term beginning on the Original Effective Date and, unless terminated sooner as herein provided, ending, on a country-by-country and Licensed Product-by-Licensed Product basis, at the expiration of the last to expire Valid Claim included in the Patent Rights covering a particular Licensed Product in a particular country or at the expiration of the Copyrights covering the relevant Licensed Product.

 

7.2       University may, by written notice to Licensee, terminate this Agreement during any April subsequent to the year 2015, if Licensee, its Affiliates, Sublicensees, or any contractors of any of the foregoing have not practiced the Invention during the calendar year which precedes such April.

 

7.3       It is expressly agreed that, notwithstanding the provisions of any other paragraph of this Agreement, if Licensee should materially breach this Agreement and fail to cure any such breach within ninety (90) days of receipt of written notice from University describing such breach, University has the right to terminate this Agreement. A material breach is a material violation of or material failure to keep or perform any covenant, condition, or undertaking of this Agreement, including, but not limited to Licensee’s:

 

(i) failure to deliver to University any payment at the time or times that such payment is due to University under this Agreement,

 

(ii) failure to provide Progress Reports and Royalty Reports as set forth in Article 4,

 

(iii) failure to meet or achieve performance milestones as set forth in Appendix C,

 

(iv) execution of a sublicense that fails to comport with Section 6.3,

 

(v) failure to possess and failure to maintain insurance as set forth in Section 11.3, or

 

(v) failure to comply with the requirements of Article 3.

 

7.4       Licensee may terminate this Agreement at any time upon giving written notice of not less than sixty (60) days to University.

 

7.5       Upon termination of this Agreement or upon termination in whole or in part;

 

(i)       Licensee shall provide University with a written inventory of all Licensed Products in the possession or under the control of Licensee (including any in the process of manufacture). Except with respect to termination for uncured material breach pursuant to Section 7.3, Licensee shall have the privilege of disposing of the inventory of such Licensed Products within a period of one hundred and eighty (180) days of such termination upon conditions most favorable to University that Licensee can reasonably obtain.

 

(ii)       Licensee shall also have the right to complete performance of all contracts requiring use of Patent Rights or Copyrights for sale of Licensed Products (except in the case of termination for uncured material breach pursuant to Section 7.3) or Licensed Products within and beyond said period of one hundred and eighty (180) days, provided that Licensee’s right to continue performance under any such contract shall not exceed one year. All Licensed Products in the possession or under the control of Licensee (including any in the process of manufacture) which are not disposed of as provided above shall, to the extent permitted by applicable law, be delivered to University or otherwise disposed of in compliance with all applicable laws, in University’s reasonable discretion, and at Licensee’s sole expense.

 

7.6       Any termination or cancellation under any provision of this Agreement shall not relieve Licensee of its obligation to pay any royalty or other fees (including attorney’s fees pursuant to Section 8.1 below) due to University at the time of such termination or cancellation.

 

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ARTICLE 8: PATENT PROSECUTION AND MAINTENANCE

 

8.1       Patent filings and prosecution for all Patent Rights licensed hereunder to Licensee shall be by counsel of University’s choosing, subject to Licensee’s consent (such consent not to be unreasonably withheld) and shall be in the name of University, according to U.S. patent law. University and Licensee shall meet as needed with such patent counsel to determine and implement a strategy for the preparation, prosecution and maintenance of the Patent Rights, University and such patent counsel shall ensure that Licensee promptly receives copies of all correspondence, (including, but not limited to, applications, Office Actions, responses, etc.), minutes of any meetings or teleconference, and filings and submissions relating thereto upon receipt from applicable patent authorities and that Licensee shall have the right, and University shall provide Licensee a reasonable opportunity, to comment and advise University on the content of any materials submitted to patent authorities, provided, however, that University shall have the right to make the final decisions for all matters associated with such prosecution and maintenance.

 

8.2       Regarding prosecution and maintenance of foreign patent applications corresponding to the U.S. Patent applications described in Section 8.1 above, Licensee shall designate in writing that country or those countries, if any, in which Licensee desires such corresponding patent application(s) to be filed. All such applications shall be in University’s name.

 

8.3       By written notification to University at least thirty (30) days in advance of any filing or response deadline, or fee due date, Licensee may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent, provided that Licensee pays for all costs incurred up to University’s receipt of such notification. Failure to provide any notification shall be considered by University to be Licensee’s notice that it expressly wishes to support any particular patent(s) or patent application(s). Upon notice that Licensee elects not to have a patent application filed or patent maintained in any particular country, or not to pay expenses associated with prosecuting or maintaining any patent application or patent, University may at its sole discretion file, prosecute, and/or maintain such patent applications or patents at its own expense and for its own benefit, and any rights or license granted hereunder held by Licensee, Affiliates, or Sublicensee(s) to such patent application(s) or patent(s) shall terminate and the parties shall amend Appendix B to reflect the then current Patent Rights.

 

8.4       For Patent Rights claiming Joint Inventions in which the lead inventor is a University employee, student or staff University shall control the preparation, filing, prosecution and maintenance of such Patent Right pursuant to the terms of this Article 8.

 

8.5       Upon written approval from University, for Patent Rights claiming Joint Inventions in which the lead inventor is an employee of Licensee, Licensee shall control the preparation, prosecution and maintenance of such patents at its sole expense. Such University approval shall not be unreasonably withheld and shall be granted within fifteen (15) days of University’s Office of Technology Development receiving a report of invention submitted by University Inventor and written request from Licensee to manage patent preparation, prosecution and maintenance of such patent, In the event Licensee is controlling the preparation, filing, prosecution and maintenance of Joint Inventions, Licensee and such patent counsel shall ensure that University promptly receives copies of all correspondence, (including, but not limited to, applications, Office Actions, responses, etc.), minutes of any meetings or teleconference, and filings and submissions relating thereto upon receipt from applicable patent authorities and that University shall have the right, and Licensee shall provide University a reasonable opportunity, to comment and advise Licensee on the content of any materials submitted to patent authorities, provided, however, that Licensee shall have the right to make the final decisions for all matters associated with such prosecution and maintenance.

 

15

 

 

ARTICLE 9: INFRINGEMENT

 

9.1       If any third party claims patent infringement against Licensee, as result of Licensee’s use of the Patent Rights, then Licensee shall promptly notify University thereof in writing, setting forth the facts of such claim in reasonable detail. As between the parties to this Agreement, Licensee shall have the first and primary right and responsibility at its own expense to defend and control the defense of any such claim against Licensee, by counsel of its own choice. Licensee shall be free to enter into a settlement, consent judgment, or other voluntary disposition of any such claim, provided that any settlement, consent judgment or other voluntary disposition of any such claim which (i) materially limits the scope, validity, or enforceability of patents included in the Patent Rights or (ii) admits fault or wrongdoing on the part of University must be approved by University, such approval not being unreasonably withheld. Licensee’s request for such approval shall include complete copies of final settlement documents, a detailed summary of such settlement, and any other information material to such settlement. University shall provide Licensee notice of its approval or denial within fifteen (15) business days of any request for such approval by Licensee, provided that (i) in the event University wishes to deny such approval, such notice shall include a detailed written description of University’ reasonable objections to the proposed settlement, consent judgment, or other voluntary disposition and (ii) University shall be deemed to have approved of such proposed settlement, consent judgment, or other voluntary disposition in the event it fails to provide such notice within such fifteen (15) day period in accordance herewith. Any amounts paid to any third party as damages or other compensation with respect to infringement of a third parties rights shall be treated as third party royalties that Licensee shall be entitled to deduct from royalties due University in accordance with Section 3.7. Subject to the policies of the Board of Governors of the University of North Carolina and the laws of the State of North Carolina, University agrees to cooperate with Licensee in any reasonable manner deemed by Licensee to be necessary in defending any such action. Licensee shall reimburse University for any reasonable, documented out of pocket expenses incurred in providing such assistance.

 

9.2       In the event that any Patent Rights licensed to Licensee are infringed by a third party, Licensee shall have the exclusive first and primary right, but not the obligation, to institute, prosecute and control any action or proceeding with respect to such infringement, by counsel of its choice, including any declaratory judgment action arising from such infringement. Licensee shall be free to enter into a settlement, consent judgment, or other voluntary disposition with respect to any such action, provided that any settlement, consent judgment or other voluntary disposition thereof which (i) materially limits the scope, validity, or enforceability of patents included in the Patent Rights or (ii) admits fault or wrongdoing on the part of University must be approved by University, such approval not to be unreasonably withheld. Licensee’s request for such approval shall include complete copies of final settlement documents, a detailed summary of such settlement, and any other information material to such settlement. University shall provide Licensee notice of its approval or denial within fifteen (15) business days of any request for such approval by Licensee, provided that (i) in the event University wishes to deny such approval, such notice shall include a detailed written description of University’ reasonable objections to the proposed settlement, consent judgment, or other voluntary disposition and (ii) University shall be deemed to have approved of such proposed settlement, consent judgment, or other voluntary disposition in the event it fails to provide such notice within such fifteen (15) day period in accordance herewith. If Licensee recovers monetary damages in the form of lost profits from a third party infringer as a remedy for the infringement of Patent Rights licensed hereunder, then Licensee shall first apply such recovery to the costs and expenses incurred in obtaining or negotiating for such recovery (including attorneys’ fees), and pay to University the royalties on the remaining portion of such lost profits at the rate specified in Section 3.6(i). If Licensee recovers monetary damages in the form of a reasonable royalty as a remedy for the infringement of Patent Rights, then, after applying such royalty to the recovery of the costs and expenses incurred in obtaining or negotiating for such royalty (including attorneys’ fees), the remaining amount of any such royalty shall be treated as Sublicensing Royalty Revenue in accordance with Section 3.6.2.

 

9.3       If Licensee elects not to enforce any patent within the Patent Rights, then Licensee shall notify University in writing within six (6) months of receiving notice that an infringement exists. University may, at its own expense and control, following the earlier of (i) such notice from Licensee or (ii) the expiration of such six (6) month period without Licensee electing to take any action with respect to such alleged or actual infringement, take steps to defend or enforce any patent within the Patent Rights and recover, for its own account, any damages, awards or settlements resulting therefrom.

 

9.4       Notwithstanding the foregoing, and in University’s sole discretion, University shall be entitled to participate through counsel of its own choosing in any legal action involving the Invention and Patent Rights. Nothing in the foregoing Sections shall be construed in any way which would limit the authority of the Attorney General of North Carolina.

 

16

 

 

ARTICLE 10: REPRESENTATIONS

 

10.1       University makes no representations or warranties;

 

(i)       that any patent will issue on the Invention, or

 

(ii)       of the validity of any patent included in the Patent Rights or that practice under such patents shall be free of infringement.

 

10.2       University represents, to its actual knowledge that as of each of the Original Effective Date and the Restatement Effective Date, (i) the entire right, title, and interest in the University’s Rights in the Existing Patent Rights, the technology claimed therein, and Inventions will be assigned to University free and clear of all liens, claims and encumbrances of any inventor or any nongovernmental third party, (ii) that University has all requisite power and authority to grant the licenses contained in this Agreement under said Existing Patent Rights, (iii) University have not entered into any agreements, other than grants from the U.S. Government which provide for the rights described in Section 2.3, with any third party with respect to the Existing Patent Rights and Copyrights, the technology claimed therein, or Inventions, (iv) University’ execution and performance of this Agreement will not result in a breach of any other contract to which they are, or will become, a party, and (v) University has not received any notification, and does not possess any information reasonably indicating, that the Existing Patent Rights or Copyrights are invalid or that the exercise by Licensee of the rights granted hereunder will infringe on any patent or other proprietary right of any third party.

 

10.3       UNIVERSITY DISCLAIMS ALL WARRANTIES WITH REGARD TO PRODUCT(S) AND SERVICE(S) LICENSED UNDER THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESSED OR IMPLIED, OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE. NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, UNIVERSITY ADDITIONALLY DISCLAIM ALL OBLIGATIONS AND LIABILITIES ON THE PART OF UNIVERSITY AND INVENTORS, FOR DAMAGES, INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT, SPECIAL, AND CONSEQUENTIAL DAMAGES, ATTORNEYS’ AND EXPERTS’ FEES, AND COURT COSTS (EVEN IF UNIVERSITY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR COSTS), ARISING OUT OF OR IN CONNECTION WITH LICENSEE’S, AFFILIATES, AND SUBLICENSEES’ MANUFACTURE, USE, OR SALE OF THE PRODUCT(S) AND SERVICE(S) LICENSED UNDER THIS AGREEMENT, EXCEPT TO THE EXTENT SUCH DAMAGES OR OTHER LIABILITIES RESULT FROM THE UNIVERSITY OR ITS EMPLOYEES’ INTENTIONAL MISCONDUCT. LICENSEE, ITS AFFILIATE(S), AND SUBLICENSEE(S) ASSUME ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED BY A PRODUCT AND/OR SERVICE MANUFACTURED, USED, OR SOLD BY LICENSEE, ITS SUBLICENSEE(S), AND AFFILIATE(S) WHICH IS A LICENSED PRODUCT(S) AS DEFINED IN THIS AGREEMENT, EXCEPT TO THE EXTENT SUCH DAMAGES OR OTHER LIABILITIES RESULT FROM THE UNIVERSITY’S OR ITS EMPLOYEES’ INTENTIONAL MISCONDUCT.

 

10.4       EXCEPT WITH RESPECT TO BREACHES OF SECTION 12 AND THE INDEMNIFICATION PROVIDED UNDER SECTION 11, NO PARTY SHALL BE ENTITLED TO RECOVER FROM THE OTHER PARTIES ANY INDIRECT, CONSEQUENTIAL, SPECIAL, EXEMPLARY, OR PUNITIVE DAMAGES IN CONNECTION WITH THIS AGREEMENT.

 

17

 

 

ARTICLE 11: INDEMNIFICATION

 

11.1       Licensee agrees to indemnify, hold harmless and defend University and UA, their officers, employees, and agents, against any and all claims, suits, losses, damages, costs, fees, and expenses asserted by third parties, both government and private, to the extent resulting from or arising out of (i) Licensee’s breach of this Agreement, (ii) Licensee’s failure to comply with any applicable laws, rules or regulations, or (iii) the exercise of Licensee’s rights under this Agreement, provided such losses do not result from the University or its employees’ gross negligence, intentional misconduct, breach of this Agreement, or failure to comply with any applicable laws, rules, or regulations.

 

11.2       Any person or entity claiming indemnification under Section 11.1 (each an “Indemnitee”) shall notify Licensee in writing promptly upon becoming aware of any claim that may be an indemnification claim (it being understood and agreed, however, that the failure by an Indemnitee to give such notice shall not relieve the Licensee of its indemnification obligation under this Agreement except and only to the extent that the Licensee is actually prejudiced as a result of such failure to give notice). Licensee and University shall agree upon the appropriate and most efficient means for the defense of each indemnification claim. The Indemnitee shall not settle or compromise an indemnification claim which would impose liability on the Licensee, without the prior written consent of the Licensee, which consent, in each case, shall not be unreasonably withheld or delayed. Licensee shall not settle or compromise an indemnification claim in any manner which would impose liability on the Indemnitee, without the prior written consent of the Indemnitee, which consent, in each case, shall not be unreasonably withheld or delayed. Each party shall reasonably cooperate with the other party and shall make available to the each other all pertinent information under such party’s control as reasonably necessary to defend against an indemnification claim.

 

11.3       Licensee is required to maintain in force at its sole cost and expense, with reputable insurance companies, general liability insurance and products liability insurance coverage in an amount reasonably sufficient to protect against liability under Sections 11.1 above.

 

ARTICLE 12: MISCELLANEOUS

 

12.1       University Confidential Information: The University may from time to time, disclose its Confidential Information to Licensee. Licensee shall not disclose University’s Confidential Information to any third party except as follows:

 

(i) to its Affiliates, Sublicensees, and any employees, officers, directors, contractors, or other agents or representatives of Licensee or any of the foregoing for purposes related to the exercise of the rights granted under this Agreement; or

 

(ii) under conditions of confidentiality to prospective or actual investors, lenders, acquirors, sublicensees, strategic partners, and investment bankers in connection with its financing, acquisition, licensing, development, commercialization, and stockholder relations activities; or

 

(iii) with the prior written consent of University, as applicable,

 

provided that, Licensee requires such recipients of University’s Confidential Information to protect the confidentiality of such Confidential Information. Licensee may also disclose University’s Confidential Information as it reasonably deems necessary or advisable in connection with the prosecution, maintenance, defense and enforcement of the Patent Rights or Copyrights or in connection with the pursuit or maintenance of regulatory or marketing approvals for, or commercialization of, Licensed Products.

 

18

 

 

12.2       Disclosures to University: Licensee, through its employees or other agents, may disclose its Confidential Information to University. University shall:

 

(i) not disclose such Confidential Information to any third party,

 

(ii) treat such information with the same degree of care as it treats its own confidential information, which shall be no less than reasonable, and

 

(iii) only use such information for purposes of enforcing its rights under this Agreement.

 

12.3       Limits on Confidential Information: Confidential Information under this Agreement shall not include information:

 

(i) which at the time of disclosure is in the public domain;

 

(ii) after disclosure, becomes part of the public domain by publication or otherwise, except by the breach of this Agreement by either party;

 

(iii) was (a) in the recipient party’s possession in documentary form at the time of disclosure or (b) independently developed by or for the recipient party by any person or persons who had no knowledge or benefit of the other party s Confidential Information, as evidenced by written documentation;

 

(iv) a party received without obligation of confidentiality or limitation on use from a third party who had the lawful right to disclose such information and who did not obtain such information under an obligation of confidentiality to either party; and

 

Confidential Information disclosed under this Agreement shall not be deemed to be within the foregoing exceptions merely because such information is embraced by more general information in the public domain or in the possession of a party. In addition, any combination of features shall not be deemed to be within the foregoing exceptions merely because individual features are in the public domain or in the party’s possession, but only if the combination itself and its principle of operation are in the public domain or in the party’s possession.

 

12.4       Notwithstanding any other provision of this Agreement, disclosure by a recipient party of the other party’s Confidential Information shall not be precluded if such disclosure:

 

(i) is in response to a valid order of a court or to another governmental body of the United States or any political subdivision thereof; or

 

(ii) is required by law or regulation;

 

provided, however, that, in either case, the party required to make such disclosures shall (1) have made reasonable effort to give prompt notice to the other party to permit it to seek a protective order or grant of confidentiality, (2) cooperate with the other party’s efforts to seek confidential or protective treatment of such information, as reasonably requested by the other party, and (3) minimize the extent of any such disclosure.

 

19

 

 

12.5       University shall be free to publish the results of its research and educational activities as it sees fit, provided that prior to any publication of any particular technology claimed, described, or enabled in the Patent Rights or Copyrights:

 

(i) University shall provide Licensee with a manuscript of any proposed paper or an abstract of any proposed presentation describing such technology at least forty-five (45) days prior to its submission for publication or presentation, and

 

(ii) as reasonably requested by Licensee, University shall (a) delete from such publication any of Licensee’s Confidential Information, (b) delay the submission of such publication or presentation for an additional period of up to forty-five (45) days in order to allow Licensee to pursue patent protection for any of its intellectual property described therein, or (c) instruct its patent counsel to make such patent filings or conduct the prosecution of the patents and patent applications included in the Patent Rights as appropriate prior to publication or presentation of such material to prevent the loss of any rights granted under this Agreement.

 

After any publication of any particular technology claimed, described, or enabled in the Patent Rights, University shall have no further obligations under this Section 12.5 with respect to the publication of such technology.

 

ARTICLE 13. MISCELLANEOUS

 

13.1       This Agreement is binding upon and shall inure to the benefit of University, its successors and assigns. However, this Agreement shall be personal to Licensee, and it is not assignable by Licensee to any other person or entity without the prior written consent of University, such consent to be in University’s sole discretion. Notwithstanding the foregoing, Licensee shall be free to assign this Agreement and its rights and obligations hereunder without University’s consent (i) to any Affiliate or (ii) in connection with any sale of substantially all of Licensee’s assets or business (or that portion of its assets or business related to the subject matter of this Agreement), merger, acquisition, consolidation, reorganization, or other similar transaction, provided that Licensee shall not be released of its obligations existing at the time of such assignment.

 

13.2       It is agreed that no waiver by either party hereto of any breach or default of any of the covenants or agreements herein set forth shall be deemed a waiver as to any subsequent and/or similar breach or default.

 

13.3       No party shall, without prior written consent of the other party, use the name or any trademark or trade name owned by the other party, or owned by an affiliate or parent corporation of the other party, in any publication, publicity, advertising, or otherwise, except that Licensee may identify University as licensor of the Patent Rights, Copyrights and Licensed Products and University may identify Licensee as exclusive licensee of Patent Rights and Copyrights. It is understood that University’s agreement under this Section is subject to the provisions of NC Public Records Act. G.S. Ch 132.

 

13.4       Notwithstanding Section 13.3 above, University may disclose the existence of this Agreement and non-confidential information regarding the status of Licensee’s commercialization of License Products in a press release, on-line, or otherwise, and on the website of University’s Office of Technology Development throughout the life of this Agreement with the prior written approval of the Licensee, such approval not to be unreasonably withheld. Further, the parties agree to cooperate with each other in preparing, reviewing and approving such disclosures, Licensee’s approval for each disclosure not to be unreasonably withheld.

 

20

 

 

13.5       Neither party hereto is an agent of the other for any purpose.

 

13.6       Any notice required or permitted to be given to the parties hereto shall be in writing and deemed to have been properly given if delivered in person or mailed by first-class mail to the other party at the appropriate address as set forth below. Other addresses may be designated in writing by the parties during the term of this Agreement.

 

University Licensee  
For all matters: For all matters:  
Director CEO  
Office of Technology Development 908 Devices Inc.  
100 Europa Drive 27 Drydock Ave.  
Suite 430    
University of North Carolina at Chapel Hill 7th Floor  
Chapel Hill, NC 27517 Boston, MA 02210  

 

13.7       This Agreement shall be interpreted and construed in accordance with the laws of the State of North Carolina. The State and Federal Courts of North Carolina shall have exclusive jurisdiction to hear any legal action arising out of this Agreement.

 

13.8       In the event that a court of competent jurisdiction holds any provision of this Agreement to be invalid, such holding shall have no effect on the remaining provisions of this Agreement, and they shall continue in full force and effect.

 

13.9       All rights and obligations contained in this Agreement, which by its nature or effect contemplate performance or observance subsequent to termination of this Agreement will survive and remain binding upon and for the benefit of the parties, its successors and permitted assigns.

 

13.10       Anything contained in this Agreement to the contrary notwithstanding, the obligations of the Licensee shall be subject to all laws, present and future and regulations, of any government having jurisdiction over the Licensee, and to orders, regulations, directions, or requests of any such government. Licensee shall undertake to comply with and be solely responsible for complying with such laws applicable to Licensee.

 

13.11       Exports of Licensed Products may be subject to U.S. export control laws and regulations, including, without limitation, the Export Administration Regulations (15 CFR 730-774) and the International Traffic in Arms Regulations (22 CFR 120-130), and may be subject to export or import regulations in countries other than the United States. Licensee assumes all obligations and responsibility for assuring that use of the Licensed Products is in compliance with all applicable export control laws and regulations. Further, Licensee agrees to require Sublicensees to comply with said obligations and responsibility.

 

21

 

 

13.12       Licensee shall, and agrees to require Sublicensees to, comply with any patent marking requirements of the intellectual property laws of the applicable countries in the Licensed Territory to the extent any failure to do so would materially and adversely affect the Licensed Product, the Patent Rights, or either party’s ability to avail itself of all potential remedies for any infringement of the Patent Rights.

 

13.13       Licensee shall be solely responsible for the payment of any and all taxes, fees, duties and other payments incurred in relation to its manufacture, use and sale of the systems and methods covered by the Patent Rights or Copyrights or Licensed Products. Licensee shall, as between the parties, be responsible for applying for and obtaining any approvals, authorizations, or validations necessary to effectuate the terms of this Agreement under the laws of the appropriate national laws of each of the countries in the Licensed Territory.

 

13.14       If any one or more of the provisions of this Agreement is held to be invalid or unenforceable by any court of competent jurisdiction, the provision shall be considered severed from this Agreement and shall not serve to invalidate any remaining provisions hereof. The parties shall make a good faith effort to replace any invalid or unenforceable provision with a valid and enforceable one such that the objectives contemplated by the parties when entering into this Agreement may be realized.

 

13.15       It is understood and agreed between University and Licensee that this Agreement constitutes the entire agreement, both written and oral, between the parties, and amends and restates the Original Agreement in its entirety, and that all prior agreements respecting the subject matter hereof, either written or oral, expressed or implied, shall be abrogated, cancelled, and are null and void and of no effect. Without limiting the foregoing, any provision of the Original Agreement not included in this Agreement is terminated as of the date hereof.

 

[Signature page to follow.]

 

22

 

 

THE UNIVERSITY OF NORTH CAROLINA AT CHAPEL HILL 908 DEVICES INC.
   
(SEAL) /s/ Jacqueline Quay   (SEAL) /s/ Kevin J. Knopp
Signature     Signature  
     
Jacqueline Quay   Kevin J. Knopp
Printed Name   Printed Name
     
Interim Director, OTD   CEO
Title   Title
     
5/20/15   May 20, 2015
Date   Date
     

Inventors

 Acknowledged and Agreed by:

   
     
/s/ J. Michael Ramsey    
J. Michael Ramsey    
Goldby Distinguished Professor    
     
5/29/15    
DATE    

 

 

 

 

APPENDIX A

INVENTIONS

 

University File
Number 		Report of Invention Title Patent Status Patent Rights Type
Licensed Product
09-0096 Micro Mass Spectrometry Ionization Source none pending Patent Rights MMS
11-0018 Integrated ion trap and RFcircuitry for mass spectrometry none pending Patent Rights MMS
12-0136 CITSIM Ion Trap Simulation Software copyright None MMS
12-0138 Modular and Compact Cylindrical Ion Trap Configuration none pending Patent Rights MMS
12-0142 Microfabricated Ionization Source patent pending Patent Rights MMS
12-0143 High Pressure Mass Spectrometry patent authorized Patent Rights MMS
12-0144 High-pressure, low-power electron sources none pending Patent Rights MMS
12-0145 Ion Trap Array Faraday Cup Detector none pending Patent Rights MMS
12-0146 Microscale Mass Spectrometry System patent pending Patent Rights MMS
12-0147 Ion trap electrode designs for controlling capacitance none pending Patent Rights MMS
13-0060 Stretched Length Ion Trap Geometry patent issued Patent Rights MMS
14-0141 High Pressure Mass Spectrometry Signal Enhancement by Means of Convective Transport patent pending Patent Rights MMS
15-0012 Electrospray Ionization Interface to High Pressure Mass Spectrometry patent authorized Patent Rights MMS
15-0087 Method of sample injection for chemical separations in microfluidic devices patent authorized Patent Rights MMS
11-0069 Microfabricated Multiemitter Electrospray Ionization Devices patent pending Limited Patent Rights LPS
12-0151 Methodology for Sample Processing and Electrospray Ionization patent pending Limited Patent Rights LPS

 

 

 

 

APPENDIX B

PATENT RIGHTS AND COPYRIGHTS

 

PATENT

 

USPTO Serial or Patent
Number 		Atty Ref Number ROI Inventors Title Patent Rights Type
Licensed Product
Temp12-0143US 5470-640PR 12-0143 J Ramsey High Pressure Mass Spectrometry Patent Rights MMS
13/804,911 5470-639 12-0146 J Ramsey Microscale Mass Spectrometry Systems, Devices and Related Methods Patent Rights MMS
PCT/US2014/019289 5470-639WO 12-0146 J Ramsey Microscale Mass Spectrometry Systems, Devices and Related Methods Patent Rights MMS
8,878,127 (13/840,653 ) 104409-0103 13-0060 J Ramsey Kevin Schultze Miniature Charged Particle Trap with Elongated Trapping Region for Mass Spectrometry Patent Rights MMS
PCT/US2013/042031 104409-0104 13-0060 J Ramsey Kevin Schultze Miniature Charged Particle Trap With elongated Trapping Region for Mass Spectrometry Patent Rights MMS
14/456,686 104409-0104 13-0060 J Ramsey Kevin Schultze Miniature Charged Particle Trap With elongated Trapping Region for Mass Spectrometry Patent Rights MMS
62/010,050 5470-713PR 14-0141 Bruno Coupier, J Ramsey, Kevin Schultze High Pressure Mass Spectrometry Signal Enhancement by Means of Convective Transport Patent Rights MMS
New 14-0141 5470-713US 14-0141 Bruno Coupier, J Ramsey, Kevin Schultze High Pressure Mass Spectrometry Signal Enhancement by Means of Convective Transport Patent Rights MMS
New 15-0012 TBD 15-0012 TBD Electrospray Ionization Interface to High Pressure Mass Spectrometry Patent Rights MMS
New 15-0087 TBD 15-0087 TBD Method of sample injection for chemical separations in microfluidic devices Patent Rights MMS
14/402,278 5470-636 12-0151 J Ramsey, N. Batz, J. Mellors Integrated Sample Processing for Electrospray Ionization Devices Limited Patent Rights LPS
13806595,8 5470-636EP 12-0151 J. Ramsey, N. Balz, J. Mellors Integrated Sample Processing for Electrospray Ionization Devices Limited Patent Rights LPS
14/001,549 5470-591 11-0069 J. Ramsey, A. Chambers Microchips with Integrated Multiple Electrospray Ionization Emitters and Related Methods, Systems and Devices Limited Patent Rights LPS
12757244.4 5470-591 EP 11-0069 J. Ramsey, A. Chambers Microchips with Integrated Multiple Electrospray Ionization Emitters and Related Methods, Systems and Devices Limited Patent Rights LPS

 

COPYRIGHT    

 

University File Number Title Authors/Contributors
12-0136 CITSIM Ion Trap Simulation Software Sorin Mitran

 

 

 

 

[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.

 

APPENDIX C

MILESTONES

 

[***]

 

 

 

 

AMENDMENT No. 1 TO AMENDED AND RESTATED LICENSE AGREEMENT

 

This first Amendment to the Amended and Restated Exclusive License Agreement dated May 20, 2015 (hereinafter referred to as the “Agreement”) by and between The University of North Carolina at Chapel Hill (“University”) and 908 Devices, Inc. (“Licensee”) is effective as of the date of the last signature written below.

 

WHEREAS, the parties now wish to amend the Agreement to update Appendix A of the .Agreement to include the Improvements known as “Method for Integrating Solid Phase Extraction with Microchip Capillary Electrophoresis-Electrospray Ionization” (UNC# 16-0017) as an Invention and to update Appendix B of the Agreement to include the related Patent Rights;

 

WHEREAS, the parties agree to be bound by the terms and conditions of the Agreement, as amended herein:

 

NOW THEREFORE, the parties agree as follows:

 

1. The following Improvement shall be defined as an Invention and a license under the related Patent Rights shall be granted to Licensee and its Affiliates pursuant to Paragraph 2.1(i) of the Agreement:

 

 · UNC# 16-0017, “Method for Integrating Solid Phase Extraction with Microchip Capillary Electrophoresis-Electrospray Ionization”

 

2. Appendix A shall be deleted in the entirety and replaced with the attached .Appendix A.

 

3. Appendix B shall be deleted in the entirely and replaced with the attached Appendix B.

 

4. Capitalized terms used herein have the same meaning as was given them in the Agreement.

 

5. Other than as amended herein, the Agreement remains in full force and effect.

 

 

 

 

IN WITNESS WHEREOF, The parties have executed this Amendment to the Agreement, as indicated below.

 

THE UNIVERSITY OF NORTH CAROLINA AT CHAPEL HILL   908 DEVICES INC.
     
/s/ Jacqueline Quay   /s/ Kevin J. Knopp
Jacqueline Quay   Kevin J. Knopp
Director of Licensing,   CEO
Office of Commercialization and Economic Development    
     
1/5/15   1/4/15
Date   Date

 

 

 

 

APPENDIX A

Inventions

 

University File No. Report of Invention Title Patent Status Patent Rights Type /
Licensed Product
09-0096 Micro Mass Spectrometry lonization Source None Pending Patent Rights MMS
11-0018 Integrated Ion Trap and RF Circuitry for Mass Spectrometry None Pending Patent Rights MMS
12-0136 CITSIM lon Trap Simulation Software Copyright None MMS
12-0138 Modular and Compact Cylindrical Ion Trap Configuration None Pending Patent Rights MMS
12-0142 Microfabricated Ionization Source None Pending Patent Rights MMS
12-0143 High Pressure Mass Spectrometry Patent Authorized Patent Rights MMS
12-0144 High Pressure, Low Power Electron Sources None Pending Patent Rights MMS
12-0145 Ion Trap Array Faraday Cup Detector None Pending Patent Rights MMS
12-0146 Microscale Mass Spectrometry System Patent Pending Patent Rights MMS
12-0147 Ion Trap Electrode Designs for Controlling Capacitance None Pending Patent Rights MMS
13-0060 Stretched Length Ion Trap Geometry Patent Pending / Issued Patent Rights MMS
14-0141 High Pressure Mass Spectrometry Signal Enhancement by Means of Convective Transport Patent Pending Patent Rights MMS
15-0012 Electrospray Ionization Interlace to High Pressure Mass Spectrometry Patent Pending Patent Rights MMS
15-0087 Method of Sample Injection for Chemical Separations in Microfluidic Devices Patent Pending Patent Rights MMS
16-0017 Method for Integrating Solid Phase Extraction with Microchip Capillary Electrophomsis-Electrospray Ionization Patent Pending Patent Rights MMS
11-0069 Microfabricated Multiemitter Elecirospray lonizaiion Devices Patent Pending / Issued Limited Patent Rights MMS
12-0151 Methodology for Sample Processing and Electrospray Ionization Patent Pending Limited Patent Rights MMS

 

 

 

 

APPENDIX B

Patent Rights and Copyrights

 

PATENT            
University
File No. 		Atty
Reference No. 		Patent Application
No. 		Patent
No. 		Inventors Title Patent
Rights
Type
Licensed
Product
11-0069 5470-591 14/001,549 9,006,648 Ramsey, Chambers Microchips with Integrated Multiple Electrospray Ionization Emitters and Related Methods, Systems and Devices Limited Patent Rights LPS
11-0069   12757244.4   Ramsey Microfabricated Multiemitter Electrospray Ionization Devices Limited Patent Rights LPS
12-0143   Temp 12-0143US   Ramsey High Pressure Mass Spectrometry Patent Rights MMS
12-0146   13/804,911   Ramsey Microscale Mass Spectrometry Systems, Devices and Related Methods MMS Patent Rights MMS
12-0146   PCT/US2014/019289   Ramsey Microscale Mass Spectrometry Systems, Devices, and Related Methods Patent Rights MMS
12-0151   14/402,278   Ramsey, Batz, Mellors Integrated Sample Processing for Electrospray Ionization Devices Limited Patent Rights LPS
12-0151   13806595.8   Ramsey Integrated Sample Processing for Electrospray Ionization . Devices Limited Patent Rights LPS
13-0060   13/840,653 8,878,127 Ramsey, Schultze Miniature Charged Particle Trap with Elongated Trapping Region for Mass Spectrometry Patent Rights MMS

 

 

 

 

13-0060   14/456,686   Ramsey, Schultze Miniature Charged Particle Trap with Elongated Trapping Region for Mass Spectrometry Patent Rights MMS
13-0060   NEW13-0060CON   Ramsey Miniature Charged Particle Trap with Elongated Trapping Region for Mass Spectrometry Patent Rights MMS
13-0060   13877607.5   Ramsey Miniature Charged Particle Trap with Elongated Trapping Region for Mass Spectrometry Patent Rights MMS
13-0060   NEW13-0060CN   Ramsey Miniature Charged Particle Trap with Elongated Trapping Region for Mass Spectrometry Patent Rights MMS
13-0060   NEW 13-0060JP   Ramsey Miniature Charged Particle Trap with Elongated Trapping Region for Mass Spectrometry Patent Rights MMS
14-0141   14/743,623   Ramsey, Coupler, Schultze Mass Spectrometry Systems with Convective Flow of Buffer Gas for Enhanced Signals and Related Methods Patent Rights MMS
15-0012   PCT/US2015/030380   Ramsey, Gilliand Electrospray Ionization Interface to High Pressure Mass Spectrometry Patent Rights MMS
15-0012   14/710,344   Ramsey, Gilliand Electrospray Ionization Interface to High Pressure Mass Spectrometry Patent Rights MMS
15-0087   14/708,906   Ramsey, Mellors, Redman Pressure Driven Microfluidic Injection for Chemical Separations

Patent Rights MMS

 

LPS

16-0017   62/243,919   Mellors, Black, Ramsey Solid Phase Extraction with Microchip Capillary Electrophoresis-Electrospray Ionization

Patent Rights MMS

 

LPS

 

COPY RIGHT    
     
University File No. Title Authors/Cortributors
12-0136 CITSIM Ion Trap Simulation Software Sorin Mitran

 

 

 

 

Exhibit 10.7

 

LIMITED EXCLUSIVE COMMERCIAL FIELD OF USE

PATENT LICENSE AGREEMENT

 

This Exclusive Commercial Patent License Agreement is between UT-Battelle, LLC (UT-Battelle), a Tennessee non-profit limited liability company (“Licensor”), and 908 Devices inc., a Delaware corporation having an address at 27 Drydock Avenue, 8th Floor, Boston, MA 02210 (“Licensee”), hereinafter referred to singly as the “Party” or jointly as the “Parties.”

 

ARTICLE 1

BACKGROUND

 

1.1 Licensor manages and operates the Oak Ridge National Laboratory under its Prime Contract No. DE-AC05-00OR22725 with the United States Department of Energy (“DOE”), an agency of the United States Government.

 

1.2 Licensor has rights in certain patents and patent applications listed in Exhibit A.

 

1.3 Licensee desires, and Licensor is willing to grant, an exclusive license under such patents and patent applications in certain fields of use.

 

1.4 This Agreement specifically includes Exhibit A, LICENSED PATENTS, Exhibit B, TERM SHEET & FINANCIAL OBLIGATIONS, Exhibit C, DEVELOPMENT AND COMMERCIALIZATION PLAN, and Exhibit D, SUBSCRIPTION AGREEMENT, which are attached.

 

1.5 Except as provided in Article 8, the license will run through the Term of this Agreement.

 

1.6 This Agreement is being executed by the Parties simultaneously with companion Patent License Agreement PLA-1669 (the “PLA-1669 License”).

 

ARTICLE 2

DEFINITIONS

 

2.1 As used in this Agreement, the following terms will have the meanings set forth below:

 

“Accounting Period” means the period from January 1 through December 31 of each year, with the first Accounting Period beginning on the Effective Date.

 

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“Combination Products” are Licensed Products which infringe or contribute to the infringement of a claim of patents or patent applications other than the Licensed Patents and to which Licensee has obtained an ownership interest or a royalty-bearing license.

 

“Combination Gross Sales” means the U.S. Dollar value of all consideration to which Licensee is entitled for the Disposition of Combination Products by Licensee. In the event Licensee does not, during the Term of this Agreement, Dispose of Combination Products that were made during the Term of this Agreement, the fair market value of such Combination Products (as if there had been a Disposition to a third party) will be included in Combination Gross Sales.

 

“Combination Net Sales” means the Combination Gross Sales, less the total of all:

 

a. sales tariffs, duties, taxes, or other governmental charges imposed on the Combination Products;

 

b. outbound transportation prepaid or allowed;

 

c. amounts allowed or credited on returns; and

 

d. normal and customary trade, quantity, cash and other similar discounts, actually taken, wholesaler chargebacks, and rebates.

 

For avoidance of doubt, Combination Net Sales shall not include, and shall be deemed to be zero, with respect to (i) the distribution of reasonable quantities of promotional samples of Combination Products and (ii) Combination Products provided for use in clinical trials, research purposes or charitable or compassionate use.

 

“Dispose” or “Disposition” means the sale, lease or other transfer of Licensed Products and/or Combination Products.

 

“Effective Date” means the date of the signature of the last Party to sign this Agreement.

 

“Field(s) of Use” means and is limited to mass spectrometry used in the following Fields of Use:

 

Field of Use 1: Military, public safety, intelligence, national security, and homeland security, including chemical and biological warfare defense and explosives detection, whether such use is by public (governmental) employees, agencies or authorities or private entities;

 

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Field of Use 2: Clinical diagnostics, medical instrumentation, and analytical instruments for life sciences applications;

 

Field of Use 3: Industrial process monitoring; and

 

Field of Use 4: Food and environmental testing and safety.

 

“Government” means the Federal Government of the United States of America, including all of its agencies and authorities.

 

“Government’s License Rights” means the Government’s nonexclusive, nontransferable, irrevocable, paid-up license to practice or to have practiced for or on behalf of the United States the Licensed Patents throughout the world, pursuant to 35 USC 202(c)(4).

 

“Gross Sales” means the U.S. Dollar value of all consideration to which Licensee is entitled for the Disposition of Licensed Products by Licensee. In the event Licensee does not, during the Term of this Agreement, Dispose of Licensed Products that were made during the Term of this Agreement, the fair market value of such Licensed Products (as if there had been a Disposition to a third party) will be included in Gross Sales.

 

“Licensed Patents” means each patent and patent application listed in Exhibit A, and any patents issuing in any country at any time from such application and any divisions, continuations, continuations-in-part (excluding those claims in such continuations-in-part applications that do not relate to uses within the Field(s) of Use) thereof, and all reissues, reexaminations, substitutes, or extensions of any such patents, and all patent applications corresponding to any of the foregoing. The term “Licensed Patents” does not include any patent found to be unenforceable or invalid by a final adjudication by a Court of competent jurisdiction.

 

“Licensed Products” means any device, apparatus, product, compound, composition of matter, product-by-process, kit, system, material, or algorithm the manufacture, use, sale, offer for sale, or import of which, but for the license granted in this Agreement, would infringe or contribute to the infringement of a claim of a Licensed Patent.

 

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“Net Sales” means the Gross Sales less the total of all:

 

a. sales tariffs, duties, taxes, or other governmental charges imposed on the Licensed Products;

 

b. outbound transportation prepaid or allowed;

 

c. amounts allowed or credited on returns; and

 

d. normal and customary trade, quantity, cash and other similar discounts, actually taken, wholesaler chargebacks, and rebates.

 

For avoidance of doubt. Net Sales shall not include, and shall be deemed to be zero, with respect to (i) the distribution of reasonable quantities of promotional samples of Licensed Products and (ii) Licensed Products provided for use in clinical trials, research purposes or charitable or compassionate use.

 

“Patent Costs” means the verifiable costs related to the preparation, filing, prosecution and maintenance of U.S. and foreign Licensed Patents.

 

“Royalty” and “Royalties” mean the payments owed to Licensor specified in Exhibit B. “Sublicensee” means a third party to whom Licensee has granted a sublicense of rights granted under Section 3.1.

 

“Sublicensing Revenue” means the U.S. Dollar value of all consideration to which Licensee is entitled for the Disposition of Licensed Products by a Sublicensee, including any license fees, royalties and milestone payments or other consideration.

 

“Sublicensing Royalties” mean the payments owed to Licensor based on Sublicensing Revenue as specified in Exhibit B.

 

“Term” means the period of time starting on the Effective Date and continuing until expiration of the last to expire Licensed Patents.

 

ARTICLE 3

GRANT

 

3.1 Licensor grants to Licensee, and Licensee accepts for the Term of this Agreement, subject to the terms and conditions set forth herein, an exclusive license under the Licensed Patents to make, have made, use, offer to sell, sell. Dispose of, and import (subject to 6.1) the Licensed Products in the Field(s) of Use throughout the world. In addition, Licensor grants to Licensee and Licensee accepts for the Term of this Agreement, the right to grant subliecnses in accordance with Article 5 of this Agreement.

 

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3.2 Licensee’s exclusive commercial license is subject to, and will in no way restrict, the Government’s License Rights.

 

3.3 Licensee’s exclusive license is subject to, and will in no way restrict, the march-in rights of the Government pursuant to 35 USC 203.

 

3.4 Licensor retains the right to grant licenses to not-for-profit research and educational institutions solely to perform research for non-commercial purposes in the Field(s) of Use.

 

3.5 Licensor may, in its sole discretion, grant licenses to the Licensed Patents outside the Field(s) of Use.

 

3.6 Licensee acknowledges that no license is granted or implied under, and expressly agrees not to make, have made, use, offer to sell, sell. Dispose of, and import the Licensed Products outside the Field of Use. Licensee agrees that making, having made, using, offering to sell, selling, Disposing of, and importing the Licensed Products outside the Field of Use is a breach of this Agreement.

 

ARTICLE 4

CONSIDERATION AND FINANCIAL OBLIGATIONS

 

4.1 In consideration for the License, Licensee agrees to comply with the provisions of this Agreement, to issue the Equity Securities as set forth herein, to pay all fees, Royalties, costs, and all other consideration within the time periods and as otherwise specified in this Agreement for the Term, and to use commercially reasonable efforts to satisfy the requirements of the Commercialization Plan set forth in Exhibit C. Prompt payment of all amounts due to Licensor and satisfaction of the Commercialization Plan requirements are material to this Agreement.

 

4.2 Licensee will pay to Licensor a fixed license fee in the amount specified in Exhibit B (Execution Fee), which will be nonrefundable and not creditable against any Royalties. Exhibit B specifies when the Execution Fee is due and payable. In the event of termination of this Agreement, the entire unpaid balance of the Execution Fee will be due and payable on or before the effective date of termination.

 

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[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.

 

4.3 Licensee will reimburse Licensor for Patent Costs as provided in Exhibit B, Part G, within thirty (30) days of submission of the proof of costs incurred by Licensor. If Licensee elects to discontinue reimbursement of Patent Costs of any patent or patent application, then that patent or patent application will be excluded from the Licensed Patents, and all rights relating to the patent or patent application will revert to Licensor and may be freely licensed by Licensor to others.

 

4.4 All payments will be made to Licensor in U.S. dollars by wire transfer in accordance with the following wire instructions, unless and until written notice is provided by Licensor of a change in the wire instructions:

 

First Tennessee Bank, Memphis –[***]

For further credit to First Tennessee, Knoxville –[***]

Beneficiary UT-Battelle, LLC

S.W.I.F.T. Code is FTBMUS44

 

4.5 Licensee will owe no Royalties and no Sublicensing Royalties on its or any Sublicensee’s Dispositions of Licensed Products involving Government funds, including funds derived through a Military Assistance Program of the Government or otherwise derived through the Government, whether the Government is acting as the purchaser or the payor, because of the Government’s License Rights. Licensee will report all Revenue and Sublicensing Revenue received from such Dispositions by providing a Government control number and identification of the Government agency in the written report for the pertinent Accounting Period.

 

4.6 In the event that Licensee fails to make any payment due to Licensor within the time period prescribed for such payment under this Agreement, then the unpaid or overdue amount will bear interest at the rate of one and one half percent (1.5%) per month from the date when payment was due until payment in full, with interest, is made. In addition, Licensee agrees to reimburse Licensor for any costs or expenses, including attorney’s fees, incurred by Licensor in collection of such overdue payments.

 

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ARTICLE 5

SUBLICENSES

 

5.1 All sublicenses must be in accordance with the terms of this Agreement.

 

5.2 Licensee will only enter into sublicenses that arc not transferable by Sublicensees, and only transferable by Licensee to Licensor.

 

5.3 All sublicenses must be approved in writing by Licensor in advance of execution by Licensee. Such approval will not be unreasonably withheld by Licensor.

 

5.4 Effective on the date of termination of this Agreement for any reason prior to the end of the Term, Licensee hereby assigns to Licensor each approved sublicense that is in effect on the date of termination, including the right to receive all income from Sublicensees. Licensee will include notification of this provision in all sublicenses.

 

5.5 Licensee will provide a copy of each sublicense to Licensor within thirty (30) days of the execution of each sublicense.

 

5.6 Licensee will pay to Licensor Sublicensing Royalties in the amounts and at the times specified in Exhibit B.

 

5.7 Subject to Article 9, Licensee must enforce all sublicenses at its cost. The Licensee will be responsible for the acts or omissions of its Sublicensees. Each sublicense granted by the Licensee will include an audit right by Licensor of the same scope as provided in Article 7 with respect to the Licensee and will include Licensor’s right to enforce the Licensed Patents. No sublicense agreement will contain any provision which would cause the grant to extend beyond the Term of this Agreement.

 

5.8 Licensee will require Sublicensees (a) to keep records and submit reports to Licensee of the same type and for the same Accounting Periods as required in Article 7, and (b) to submit to Licensor at the same time Licensee is required to submit a written report under Article 7, a report of all uses and Dispositions and the amount of payments made to Licensee in connection with such use.

 

5.9 Licensee will not grant to Sublicensees the right to grant sublicenses or the right to enforce any Licensed Patent.

 

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ARTICLE 6

CONDITIONS OF GRANT

 

6.1 Licensee agrees that any Licensed Products for use or sale in the United States will be substantially manufactured in the United States as and to the extent required by U.S. law, Department of Energy Regulations and Licensor’s Prime Contract. Licensee will include this U.S. manufacture requirement in all sublicenses that Licensee grants.

 

6.2 Licensee will mark all Licensed Products in accordance with the statutes of the United States relating to marking of patented articles (sec 35 U.S.C. § 287). Licensee will include this marking requirement in all sublicenses that Licensee grants. Any such marking may indicate that Licensee has a license from Licensor. Otherwise, Licensee is prohibited from using Licensor’s name or the name “Oak Ridge National Laboratory” in any such marking or any advertising, promotion or commercialization of Licensed Products without written approval of Licensor; provided however, that Licensee shall be permitted to disclose factual information concerning the source of the rights licensed hereunder, for example, by identifying Licensor as the licensor of the rights hereunder or by identifying Oak Ridge National Laboratory as the institution where the Licensed Patents were invented, provided that such disclosures are not promotional in nature and do not suggest an endorsement of any Licensed Product by Licensor, Oak Ridge National Laboratory, the U.S. government, or any of their affiliates or agencies.

 

6.3 The rights and licenses granted by Licensor in this Agreement arc personal to Licensee and may not be assigned or otherwise transferred in whole or in part except by (i) the sale of all or substantially all of the assets of the Company on a consolidated basis to an unrelated person or entity, (ii) a merger, reorganization or consolidation in which the outstanding shares of the Company’s capital stock are converted into or exchanged for securities of the successor entity and the holders of the Company as outstanding voting power immediately prior to such transaction do not own at least a majority of the outstanding voting power of the successor entity immediately upon completion of such transaction, or (iii) the sale, in a single transaction or series of related transactions, of all or a majority of the Company as capital stock to an unrelated person or entity (an “Acquisition”). In the event of an Acquisition, Licensee may assign its rights and obligations under this Agreement to the merging or acquiring entity, effective on the date the merger or acquisition becomes effective, provided that all the following requirements have been satisfied in advance of the merger or acquisition:

 

6.3.1 Licensee notifies Licensor within forty-five (45) calendar days prior to said merger or acquisition;

 

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6.3.2 Licensors approve the other parties involved in such transaction, it being understood that such approval by Licensors may only be refused if any such other party is a Restricted Entity;

 

6.3.3 Licensee shall have paid all royalties, fees and payments due Licensor;

 

6.3.4 The merging or acquiring entity has agreed to comply with the terms and conditions of this Agreement; and

 

6.3.5 If the merging or acquiring entity is subject to ownership or control by a non-U.S. entity, the Licensee has obtained DOE approval of the assignment and will comply with the DOE’s foreign ownership and control justification criteria then in effect.

 

For purposes of this Section 6.3, the term “Restricted Entity” means any person or entity identified on the Denied Persons List published by the Bureau of Industrial Security, or any entity incorporated or having a principle place of business in an embargoed country as defined in Part 746 of the Export Administration Regulations.

 

6.4. Licensee will not pledge its rights under this Agreement for any reason, including as security to obtain financing, without the prior written approval of Licensor. The Parties agree that any such pledge by Licensee without such approval by Licensor will be an automatic, material and incurable breach of the Agreement resulting in termination of the Agreement effective as of the attempt by Licensee to make such pledge.

 

6.5. Licensee hereby agrees that, in the event Licensee, by its own actions, or the action of any of its shareholders or creditors, files or has filed against it a case under the Bankruptcy Code of 1978, as previously or hereafter amended, Licensor shall be entitled to relief from the automatic stay of Section 362 of Title 11 of the U.S. Code, as amended, to pursue any rights and remedies available to it under the License. Licensee hereby waives the benefits of such automatic stay and consents and agrees to raise no objection to such relief.

 

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ARTICLE 7

RECORDS, REPORTS, AND ROYALTY PAYMENTS

 

7.1 Licensee will keep and make available to Licensor for audit, inspection and copying by Licensor or its designee, including an accounting firm, adequate and sufficiently detailed records to enable Licensee’s financial obligations, including obligations incurred as a result of sublicensing in accordance with 5.6, if applicable, required under this Agreement to be easily determined. Licensee will maintain these records for a period of three (3) years after the end of the last Accounting Period to which the records refer. In the event an examination of Licensee’s records reveals an underpayment of more than 5% of the accurate Royalty amount, Licensee will pay all costs incurred by Licensor related to the examination of records in addition to paying the balance due.

 

7.2. Licensee will provide Licensor a written report for each Accounting Period during the Term of this Agreement, no later than thirty (30) days after the end of each Accounting Period, that identifies for such Accounting Period:

 

(a) the total Gross Sales received by Licensee from the making, use, or Disposition of Licensed Products itemized by domestic and/or foreign rights;

 

(b) the total amount of sales tariffs, duties and/or taxes imposed on the Licensed Products manufactured in the United States;

 

(c) the total outbound transportation costs prepaid or allowed;

 

(d) the total amounts allowed or credited on returns; and,

 

(e) the total amount of Royalties due to Licensor.

 

The first such report will include this information for all Licensed Products Disposed of between the Effective Date and the end of the first Accounting Period.

 

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7.3 Licensee will submit a written report to Licensor within thirty (30) days after the date of any termination or expiration of this Agreement which contains the same information required in 7.2 above for Licensed Products made, used, or Disposed of prior to such expiration or termination that were not previously reported to Licensor. At the time this report is submitted. Licensee will pay to Licensor all Royalties and any other consideration due Licensor.

 

ARTICLE 8

BREACH AND TERMINATION

 

8.1 This Agreement may be terminated by either Party for any material breach of the Agreement by the other Party. Such termination will be effective sixty (60) days after written notice specifying the breach to the other Party. If the specified breach is cured before the effective date of termination, the Agreement will not be terminated.

 

8.2 In the event Licensee cither (a) fails to make payment to Licensor of Royalties or other consideration in accordance with this Agreement or (b) fails to use commercially reasonable efforts to satisfy the requirements of the Commercialization Plan in Exhibit C, Licensor may, at its sole discretion, terminate this Agreement with respect to specified Licensed Patents. Such a termination shall not terminate any obligations which have accrued as of the date of such termination, including any obligation to pay any Royalties.

 

8.3 In addition to termination, in the event of a material breach by Licensee, Licensor may pursue any rights and remedies available to it by law.

 

8.4 This Agreement will not be terminated for any breach that is the result of an act of God, acts or omissions of any government or agency thereof, compliance with rules, regulations, or orders of any governmental authority or any office, department, agency, or instrumentality thereof, fire, storm, flood, earthquake, accident, acts of the public enemy or terrorism, war, rebellion, insurrection, riot, sabotage, invasion, quarantine, restriction, transportation embargoes, or failures or delays in transportation.

 

8.5 Any termination of this Agreement will not impact Licensor’s ownership interest, if any, in Licensee.

 

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8.6 The rights and remedies granted herein, and any other rights or remedies which the Parties may have, cither at law or in equity, are cumulative and not exclusive of others,

 

8.7 Neither Party will be relieved of any obligation or liability under this Agreement arising from any act or omission committed prior to the termination date. Upon termination, Licensee will execute any documents necessary to achieve the transfer to Licensor of all rights to which Licensor may be entitled under this Agreement.

 

8.8 Licensee may terminate this Agreement for any reason if Licensee provides Licensor with sixty (60) calendar days prior notice of its intent to terminate and pays Licensor all patent reimbursement fees owed at the time or termination, if applicable, and all other fees and Royalties due or the pro rata portion of any Minimum Annual Royalties due in, or at the end of, the year of termination under Exhibit B, whichever is greater.

 

8.9 This Agreement will terminate automatically upon a final adjudication of invalidity, unenforceability, or the extinguishment of all Licensed Patents, for any reason.

 

8.10 This Agreement will terminate automatically if Licensee contests the validity or enforceability of any Licensed Patent, or requests reexamination of any Licensed Patent.

 

8.11 Licensee will terminate a sublicense automatically if the Sublicensee contests the validity or enforceability of any Licensed Patent, or requests reexamination of any Licensed Patent.

 

8.12 Expiration or termination of this Agreement will be without prejudice to any rights that may have accrued to the benefit of a Party prior to such expiration or termination.

 

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ARTICLE 9

INFRINGEMENT

 

9.1 Licensee will notify Licensor in writing of any suspected infringement of the Licensed Patents in the Field of Use, and each Party will inform the other of any evidence of such suspected infringement within a reasonable time of obtaining such evidence.

 

9.2 Licensee will have the right during the term of this Agreement to institute, prosecute, and settle at its own expense suits for infringement of the Licensed Patents for any infringement occurring within the Field of Use, and if required by law, Licensor will join as party plaintiff in such suit. Licensee shall obtain Licensor’s consent before instituting any such action, such consent not to be unreasonably withheld. For avoidance of doubt, it shall not be unreasonable for Licensor to withhold such consent in the event that the proposed enforcement action would reasonably be anticipated to result in a narrowing of the scope of any of the Licensed Patents or a finding that the asserted claims of a Licensed Patent are invalid. Licensee shall not be permitted to settle any such action in a manner that limits the scope of any Licensed Patent or that admits liability or fault on the part of the Licensor. Licensee will be entitled to retain all damages and any other consideration recovered at successful conclusion of the suit.

 

9.3 In the event Licensee decides not to bring any such suit, Licensee will so notify Licensor and Licensor may bring such suit. Where such suit is brought by Licensor, Licensor will be entitled to retain all damages and any other consideration recovered at successful conclusion of the suit.

 

9.4 Licensor will have the right in its absolute discretion during the Term of this Agreement to commence suits for infringement of the Licensed Patents for any infringement outside the Field of Use.

 

9.5 Notwithstanding the pendency of any infringement (or other) claim or action by or against Licensee, Licensee will have no right to reduce, terminate or suspend (or escrow) payment of any amounts required to be paid to Licensor pursuant to this Agreement.

 

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ARTICLE 10

REPRESENTATIONS AND WARRANTIES

 

10.1 Licensee represents and warrants that it will not export any technical information (or the direct product thereof) furnished to Licensee, cither directly or indirectly by Licensor in the grant of license to the Licensed Patents, from the United States of America, directly or indirectly without first complying with all requirements of the Export Administration Regulations, including the requirement for obtaining any export license, if applicable. Licensee will indemnify, defend and hold harmless Licensor, DOE, their respective members, officers, directors, agents, employees, and persons acting on their behalf, (“Indemnitees”) from liability involving the violation of such export regulations, either directly or indirectly, by Licensee.

 

10.2 Licensee will indemnify, defend and hold harmless Licensor, DOE, their respective members, officers, directors, agents, employees, and persons acting on their behalf, (“Indemnitees”) from liability involving the violation of such export regulations, either directly or indirectly, by Licensee.

 

10.3 Licensee acknowledges it may be subject to criminal liability under U.S. laws for Licensee’s failure to obtain any required export license.

 

10.4 Licensee agrees to indemnify and hold harmless Indemnitees from and against any and all liabilities, penalties, fines, forfeitures, claims, demands, causes of action, damages, and costs and expenses (including the costs of defense, prosecution and/or settlement, including, but not limited to, attorney’s fees) incurred in connection with any action asserted by a third party, and caused by, arising out of or related to, in whole or in part. Licensee’s and/or any Sublicensee’s exercise of rights under this Agreement or any other action or inaction relating to Licensed Patents, Licensed Products, or Licensed Processes, including, but not limited to, claims or demands of product liability, personal injury, death, damage to property or violation of any laws or regulations, except for those arising from Licensor’s negligence or breach of this Agreement or the PL A -1669 Agreement.

 

10.5 This agreement is entered into by UT-Battelle in its private capacity. It is understood and agreed that the U.S. Government is not a party to this agreement and in no manner whatsoever shall be liable for, nor assume any responsibility or obligation for, any claim, cost or damages arising out of or resulting from this Agreement or the subject matter licensed.

 

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10.6 Nothing in this Agreement shall be deemed to be a representation or warranty by Licensor or the U.S. Government of the validity of any of the patents or the accuracy, safety, or usefulness for any purpose, of any technical information, techniques, or practices at any time made available by Licensor. Neither the U.S. Government nor Licensor nor any member company of Licensor shall have any liability whatsoever to Licensee or any other person for or on account of any injury, loss, or damage of any kind or nature sustained by, or any damage assessed or asserted against, or any other liability incurred by or imposed upon Licensee or any other person, arising out of or in connection with or resulting from:

 

(A) The production, use, or sale of any apparatus or product, or the practice of the Licensed Patents;

 

(B) The use of any technical information, techniques, or practices disclosed by Licensor; or

 

(C) Any advertising or other promotional activities with respect to any of the foregoing, and Licensee shall hold the U.S. Government, Licensor, and any member company of Licensor harmless in the event the U.S. Government, Licensor or any member company of Licensor is held liable.

 

Licensor represents that (i) it has the right to grant all of the rights granted herein, subject to the rights of the Government of the United States of America referenced in Article 3, and (ii) all inventors of the inventions claimed in the Licensed Patents have assigned all of their right, title and interest in and to such inventions, and in and to such patents, to Licensor.

 

ARTICLE 11

DISCLAIMERS

 

11.1 NEITHER LICENSOR, DOE, NOR PERSONS ACTING ON THEIR BEHALF WILL BE RESPONSIBLE FOR ANY INJURY TO OR DEATH OF PERSONS OR OTHER LIVING THINGS OR DAMAGE TO OR DESTRUCTION OF PROPERTY OR FOR ANY OTHER LOSS, DAMAGE, OR INJURY OF ANY KIND WHATSOEVER RESULTING FROM LICENSOR’S GRANT OF LICENSE TO LICENSEE UNDER THIS AGREEMENT.

 

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11.2 ALL LICENSED PATENTS, INFORMATION, MATERIALS OR SERVICES FURNISHED UNDER OR WITH THIS AGREEMENT (“DELIVERABLES”) ARE PROVIDED ON AN “AS IS” BASIS. NEITHER LICENSOR, DOE, NOR PERSONS ACTING ON THEIR BEHALF MAKE ANY REPRESENTATIONS, OR EXTEND ANY WARRANTIES, EITHER EXPRESS OR IMPLIED: (a) WITH RESPECT TO THE VALIDITY OF THE LICENSED PATENTS; (b) WITH RESPECT TO THE MERCHANTABILITY, ACCURACY, COMPLETENESS, FITNESS FOR USE OR USEFULNESS OF ANY DELIVERABLES; (c) THAT THE USE OF ANY SUCH DELIVERABLES WILL NOT INFRINGE PRIVATELY OWNED RIGHTS; (d) THAT THE DELIVERABLES WILL NOT RESULT IN INJURY OR DAMAGE WHEN USED FOR ANY PURPOSE; (e) THAT THE DELIVERABLES WILL ACCOMPLISH THE INTENDED RESULTS OR ARE SAFE FOR ANY PURPOSE, INCLUDING THE INTENDED OR PARTICULAR PURPOSE; OR (f) WITH RESPECT TO USE, OR DISPOSITION BY LICENSEE OR ITS VENDEES OR OTHER TRANSFEREES OF LICENSED PRODUCTS INCORPORATING OR MADE BY USE OF (1) INVENTIONS LICENSED UNDER THIS AGREEMENT OR (2) INFORMATION, IF ANY, FURNISHED UNDER THE AGREEMENT. FURTHERMORE, LICENSOR AND DOE HEREBY SPECIFICALLY DISCLAIM ANY AND ALL WARRANTIES, EXPRESS OR IMPLIED, FOR ANY LICENSED PRODUCTS RESULTING FROM LICENSOR’S GRANT OF LICENSE HEREUNDER. IT IS AGREED THAT NEITHER LICENSOR NOR DOE WILL BE LIABLE FOR CONSEQUENTIAL, SPECIAL, OR INCIDENTAL DAMAGES IN ANY EVENT. LICENSEE AND ITS SUBLICENSEES WILL MAKE NO WARRANTY, EXPRESS OR IMPLIED, ON BEHALF OF LICENSOR OR THE DOE.

 

16

 

 

11.3 Nothing in this Agreement will be construed as

 

a. an obligation of the Licensor to bring or prosecute actions or suits against third parties for infringement (except to the extent and in the circumstances stated in Article 9); or

 

b. an obligation of the Licensor to furnish any manufacturing or technical information or technical assistance, or

 

c. conferring a right to use in advertising, publicity, or otherwise any trademark or name of Licensor (except to the extent stated in 6.2); or

 

d. granting by implication, estoppel, or otherwise, any licenses or rights under patents of Licensor other than Licensed Patents, regardless of whether such other patents are dominant of or subordinate to any Licensed Patents.

 

ARTICLE 12

GENERAL

 

12.1 All notices and reports will be addressed to the Parties as follows:

 

If to Licensor:

 

Accounting Administration, Partnerships Facsimile
UT-Battelle, LLC (865) 576-9465
One Bethel Valley Road Phone
Oak Ridge, Tennessee 37831-6196 (865) 241-2353
  E-Mail
  collinssml@ornl.gov

 

If to Licensee:

 

Kevin Knopp Facsimile
908 Devices Inc. (978) 909-9004
27 Drydock Avenue, 8th Floor Phone
Boston, MA 02210 (978) 729-4478

 

12.2 All stock certificates, if any, will be sent to the address for notices.

 

12.3 Any notice, report or any other communication required to be given will be in writing and delivered either: (a) personally, (b) by express, registered or certified first-class mail, (c) by commercial courier, or (d) by facsimile with machine confirmation of transmission.

 

17

 

 

12.4 The failure of cither Party to enforce a provision of this Agreement or to exercise any right or remedy will not be a waiver of such provision or of such rights or remedies or the right of the Parties thereafter to enforce each and every provision, right or remedy.

 

12.5 This Agreement may be amended or modified only by a written instrument signed by both Parties.

 

12.6 The determination by a Court of competent jurisdiction that any part, term, or provision of this Agreement is illegal or unenforceable, will not affect the validity of the remaining provisions of this Agreement.

 

12.7 Licensor may assign this Agreement and all rights, duties and obligations hereunder, to DOE or a successor contractor to Licensor, as may be required under its prime contract with DOE.

 

12.8 This Agreement will be construed according to the laws of the State of Tennessee and the United States of America and in the English language. Any action brought to enforce any provision or obligation hereunder will be brought in the Federal District Court for the Eastern District of Tennessee. However, il jurisdiction is not found in Federal Court, actions will be brought in Tennessee in either Knox, Roane, or Anderson County Court.

 

12.9 This Agreement is solely for the benefit of the Parties, represents the entire and integrated agreement between the Parties, and supercedes all prior negotiations, representations, and agreements, either written or oral. This Agreement, and each and every provision thereof, is for the exclusive benefit of Licensor and Licensee and not for the benefit of any third party, except to the extent expressly provided in the Agreement.

 

ARTICLE 13

OFFER

 

The offer to execute this Agreement shall expire if this Agreement is not signed by Licensee and returned to Licensor on or before June 15, 2012.

 

18

 

 

IN WITNESS WHEREOF, each of the Parties hereto has caused this Agreement of be executed in duplicate originals by its duly authorized officers or representatives.

 

UT-BATTELLE, LLC

 

By: /s/ Michael J. Paulus  
       
Name:  Michael J. Paulus  
       
Title: Director, Technology Transfer    
Date: 8 June 2012    
       
908 DEVICES INC.    
By: /s/ Kevin J. Knopp    
Name Kevin J. Knopp    
Title: President & CEO    
Date: 6/13/12    

 

19

 

 

EXHIBIT A: LICENSED PATENTS

 

Docket

No.

Country Title Inventor(s) Ser. No./Pat. No. Filing/Issue Date
1114 US Pulsed Discharge Ionization Source for Miniature Ion Mobility Spectrometers

John M.

Ramsey;

William B.

Whitten; Jun

Xu

6,822,225 11/23/2004
1114 JP Pulsed Discharge Ionization Source for Miniature Ion Mobility Spectrometers

John M.

Ramsey;

William B.

Whitten; Jun

Xu

JP 4522866 B2 9/10/2003
1114 EPO Pulsed Discharge Ionization Source for Miniature Ion Mobility Spectrometers

John M.

Ramsey;

William B.

Whitten; Jun

Xu

EP App

3816115.4

9/10/2003
1209 US Ion trap array-based systems and methods for chemical analysis

John M.

Ramsey;

William B.

Whitten

6,933,498 8/23/2005

 

  Initials  
  UT-Battelle:
  Date: 6/8/12
  Licensee:
  Date: 6/13/12
   

 

 

20

 

 

EXHIBIT B: TERM SHEET & FINANCIAL OBLIGATIONS

 

A. Type of License:

 

Field of Use Exclusive

 

B. Field(s) of Use:

 

Field of Use 1: Military, public safety, intelligence, national security, and homeland security, including chemical and biological warfare defense and explosives detection, whether such use is by public (governmental) employees, agencies or authorities or private entities;

 

Field of Use 2: Clinical diagnostics, medical instrumentation, and analytical instruments for life sciences applications;

 

Field of Use 3: Industrial process monitoring; and

 

Field of Use 4: Food and environmental testing and safety.

 

C. Execution Fee:

 

In consideration for the execution of this Agreement, Licensee agrees to pay Licensor an Execution Fee comprising Payments and to convey to Licensor a Convertible Promissory Note as follows:

 

1. Cash Payments:

 

(a) Five Thousand U.S. Dollars (US$5,000) within fifteen (15) business days of Effective Date; and

 

(b) Fifteen Thousand U.S. Dollars (US$15,000) within fifteen (15) business days of the beginning of the second Accounting Period.

 

This Agreement is being entered into by the Parties simultaneously with PLA- 1669 License. A percentage of the Cash Payments paid by Licensee under this Agreement will be deemed to be the Cash Payments for the PLA-1669 License.

 

2. Grant of Equity:

 

Licensee will issue to the Licensor 120,000 shares of common stock of Licensee. If, immediately prior to the Trigger Financing Date, the shares issued to Licensor under the immediately preceding sentence constitute less than $ 120,000 worth of stock on a pre-money basis (as such value is calculated for purposes of the offering occurring on the Trigger Financing Date), then Licensee shall issue additional shares of common stock to Licensor such that immediately after such issuance and immediately prior to the Trigger Financing Date, the total number of shares issued to Licensor by Licensee shall be equal to $120,000 worth of stock on a pre-money basis (as such value is calculated for purposes of the offering occurring on the Trigger Financing Date); it being understood that no additional shares or other securities will be issuable to the Licensor in connection with or as a result of the Equity Securities being issued in the transaction that results in the Trigger Financing Date. The issuance(s) of common stock to Licensor shall be made in accordance with a subscription agreement in substantially the form attached hereto as Exhibit D to be entered into by and between Licensor and Licensee as of the Effective Date.

 

21

 

 

[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.

 

For purposes of this Exhibit B, the term “Trigger Financing Date” means the date on which Licensee receives a cumulative total of two million dollars ($2,000,000) in cash in exchange for the issuance of Equity Securities in one or more offerings and the term “Equity Securities” means any capital shares of Licensee (including without limitation common and preferred shares), and any securities of Licensee that are convertible into any capital shares of Licensee.

 

A percentage of the Equity issued by Licensee under this Agreement will be deemed to be the Equity issued to Licensee for the PLA-1669 License.

 

D. Running Royalty Rate Structure:

 

1) Net Sales Royalty: Licensee will pay a Royalty to Licensor each year during the Term within thirty (30) days of the end of each Accounting Period of [***] of the Net Sales.

 

A percentage of the Net Sales Royalty paid by Licensee under this Agreement will be attributed to the Net Sales Royalty for the PLA-1669 License.

 

2) Combination Net Sales Royalty: Licensee will pay a Royalty to Licensor each year within thirty (30) days of the end of each Accounting Period of [***] of the Combination Net Sales.

 

A percentage of the Combination Net Sales Royalty paid by Licensee under this Agreement will be attributed to the Combination Net Sales Royalty for the PLA-1669 License.

 

E. Annual Minimum Royalty:

 

Licensee will pay Licensor the difference between the amount of the total Running Royalty plus Sublicensing Royalties and the Annual Minimum Royalty in the event that the Running Royalty due under Paragraph B plus the Sublicensing Royalties due under Paragraph F together do not equal or exceed the Annual Minimum Royalty set out in the table below.

 

Accounting Period   Annual Minimum Royalty
1   Zero U.S. Dollars ($0.00)
2   Zero U.S. Dollars ($0.00)
3   Zero U.S. Dollars ($0.00)
4   Twenty Thousand U.S. Dollars (US$20,000)
5   Twenty Thousand U.S. Dollars (US$20,000)
6 and each Accounting   Seventy Thousand U.S. Dollars (US$70,000)
Period thereafter    

 

22

 

 

[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.

  

A percentage of the Annual Minimum Royalty paid by Licensee under this Agreement will be attributed to the Annual Minimum Royalty for the PLA-1669 License.

 

F. Sublicense Royalty:

 

Licensee will pay to Licensor a portion of all Sublicensing Revenue in the amounts set out below, such payment being due and payable by Licensee at the time Licensee’s payment of its Royalties owed under this Agreement for the same Accounting Period are due and payable. For each sublicense executed during the first four (4) Accounting Periods, Licensee will pay Licensor [***] of all Sublicensing Revenue owed to Licensee by each Sublicensee over the life of each sublicense. For each sublicense executed during the fifth (5th) Accounting Period and each Accounting Period thereafter, Licensee will pay Licensor [***] of all Sublicensing Revenue owed to Licensee by each Sublicensee over the life of each sublicense.

 

A percentage of the Sublicensing Revenue paid by Licensee under this Agreement will be attributed to the Sublicensing Revenue for the PLA-1669 License.

 

G. Reimbursement of Patent Costs:

 

Licensee will reimburse Licensor solely for the Patent Costs described below in accordance with Paragraph 4.4 of the Agreement:

 

1. patent costs incurred after January 3, 2014 for U.S. Licensed Patents, and
2. patent costs incurred after the Effective Date of this Agreement for Licensed Patents that are not U.S. Licensed Patents.

 

NOTICE

 

This Exhibit contains financial and commercial information that is BUSINESS SENSITIVE and the Parties hereby agree not to use or disclose this Exhibit to any third party’ without the advance written approval of the other Party, except: (1) to those necessary to enable the Parties to perform under this Agreement; (2) as may be required by the UT-Battelle Prime Contract with the DOE under the same restrictions as set forth herein; or (3) in event of breach of any provision of this Agreement by either Party, to those deemed necessary by the non-breaching Party to enforce the non-breaching Party’s rights under the Agreement.

 

  Initials  
  UT-Battelle:
  Date: 6/8/12
  Licensee:
  Date: 6/13/12
   

 

 

23

 

 

[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.

 

EXHIBIT C: DEVELOPMENT AND COMMERCIALIZATION PLAN

 

[***]

 

24

 

 

NOTICE

 

This Exhibit contains financial and commercial information that is BUSINESS SENSITIVE and the Parties hereby agree not to use or disclose this Exhibit to any third party without the advance written approval of the other Party, except: (1) to those necessary to enable the Parties to perform under this Agreement; (2) as may be required by the UT-Battelle Prime Contract with the DOE under the same restrictions as set forth herein; or (3) in event of breach of any provision of this Agreement by either Party, to those deemed necessary by the non-breaching Party to enforce the non-breaching Party’s rights under the Agreement.

 

  Initials  
  UT-Battelle:
  Date: 6/8/12
  Licensee:
  Date: 6/13/12
     

 

 

25

 

 

EXHIBIT D SUBSCRIPTION AGREEMENT

(attached)

 

26

 

 

SUBSCRIPTION AGREEMENT

 

This Subscription Agreement (the “Agreement”) is made and entered into as of 6/13 , 2012 (the “Effective Date”), by and between 908 Devices Inc., a Delaware corporation (the “Company”), and UT-Battelle, LLC, managing and operating the Oak Ridge National Laboratory under its Prime Contract No. DE-AC05-OOOR22725 with the United States Department of Energy (“DOE”), an agency of the United States Government, (the “Purchaser”).

 

WHEREAS, the Company and the Purchaser entered into a Limited Exclusive Commercial Field of Use Patent License Agreement (the “License Agreement”) dated as of the Effective Date, pursuant to which the Purchaser is granting, and the Company is receiving a license (the “License”) for certain valuable inventions, the consideration for which includes shares of the capital stock of the Company.

 

WHEREAS, on the terms and subject to the conditions set forth herein, the Purchaser desires to subscribe for, and the Company proposes to issue to the Purchaser, one hundred and twenty thousand (120,000) shares (together with any other such shares as are issued to Purchaser in accordance with the License Agreement, the “Subscribed Shares”) of the Company’s Common Stock, par value $0,001 per share (the “Common Stock”) as partial consideration for the License.

 

NOW, THEREFORE, in consideration of the foregoing and of the mutual covenants and obligations hereinafter set forth and of other good and valuable consideration, the adequacy and receipt of which are hereby acknowledged, the parties hereto, intending to be legally bound, hereby agree as follows:

 

1.             Defined Terms. The following capitalized terms, as used in this Agreement, shall have the meanings set forth below.

 

1.1          “Acquisition” means the consummation of (i) the dissolution or liquidation of the Company, (ii) the sale of all or substantially all of the assets of the Company on a consolidated basis to an unrelated person or entity, (iii) a merger, reorganization or consolidation in which the outstanding shares of the Company’s capital stock are converted into or exchanged for securities of the successor entity and the holders of the Company as outstanding voting power immediately prior to such transaction do not own at least a majority of the outstanding voting power of the successor entity immediately upon completion of such transaction, or (iv) the sale, in a single transaction or series of related transactions, of all or a majority of the Company as capital stock to an unrelated person or entity.

 

1.2          “Person” shall mean an individual, a corporation, a partnership, a joint venture, a trust, an unincorporated organization, a limited liability company, a government and any agency or political subdivision thereof.

 

1.3          “Securities Act” shall mean the Securities Act of 1933, as it may be amended from time to time, and the rules and regulations thereunder.

 

 

 

1.4          “Shares” shall means, at any time, shares of (i) common stock, and (ii) any other equity securities now or hereafter issued by the Company, together with any options thereon and any other shares of stock issued or issuable with respect thereto (whether by way of a stock dividend, stock split or in exchange for or upon conversion of such shares or otherwise in connection with a combination of shares, recapitalization, merger, consolidation or other corporate reorganization).

 

1.5          “Stockholders” shall mean all holders of capital stock of the Company.

 

1.6          “Transfer” shall mean any direct or indirect transfer, donation, sale, assignment, pledge, hypothecation, grant of a security interest in or other disposal or attempted disposal of all or any portion of a security, any interest or rights in a security, or any rights under this Agreement. “Transferred” means the accomplishment of a Transfer, and “Transferee” means the recipient of a Transfer.

 

2.             Purchase and Sale of Subscribed Shares.

 

2.1       Purchase and Sale of Subscribed Shares. Subject to the terms and conditions set forth herein and in the License Agreement, upon the execution hereof, the Company shall Transfer to the Purchaser, and the Purchaser shall accept from the Company, the Subscribed Shares as partial consideration of the License.

 

2.2       Delivery of Certificates Representing Purchased Subscribed Shares. The Company shall deliver to the Purchaser a certificate in the name of the Purchaser representing the Subscribed Shares transferred to the Purchaser.

 

3.             Restrictions on Transfer; Right of Refusal; Drag-Along Right

 

3.1       Restrictions on Transfer. Except as allowed in Section 6.4 below, Purchaser agrees that it will not, without the prior written consent of the Board of Directors of the Company, Transfer all or any portion of the Shares now owned or hereafter acquired by the Purchaser, except in connection with, and strictly in compliance with the conditions of this Section 3.

 

3.2       Right of Refusal. In the event that the Purchaser entertains a bona fide offer to purchase all or any portion of the Shares held by the Purchaser (a “Transaction Offer”) from any other Person (a “Buyer”), such Purchaser may, at its discretion, Transfer such Shares pursuant to and in accordance with the following provisions of this Section 3.2:

 

(a)       Offer Notice. The Purchaser shall cause the Transaction Offer and all of the terms thereof to be reduced to writing and shall promptly notify the Company of such Purchaser’s desire to effect the Transaction Offer and otherwise comply with the provisions of this Section 3.2 (such notice, the “Offer Notice”). The Purchaser’s Offer Notice shall constitute an irrevocable offer to sell all, but not less than all, of the Shares which are the subject of the Transaction Offer (the “Offered Shares”) to the Company, on the basis described below, at a purchase price equal to the price contained in, and on the same terms and conditions of, the Transaction Offer. The Offer Notice shall be accompanied by a true copy of the Transaction Offer (which, to the extent permitted by the terms of the Transaction Offer, shall identify the Buyer and all relevant information in connection therewith).

 

2

 

 

(b)          Company Option. The Company shall have the option to purchase all or a portion of the Offered Shares. At any time within twenty (20) days alter receipt by the Company of the Offer Notice (the “Company Option Period”), the Company may elect to accept the offer to purchase with respect to any or all of the Offered Shares and shall give written notice of such election (the “Company Acceptance Notice”) to the Purchaser within the Company Option Period, which notice shall indicate the number of Shares that the Company is willing to purchase. The Company Acceptance Notice shall constitute a valid, legally binding and enforceable agreement for the sale and purchase of the Shares covered by the Company Acceptance Notice. If the Company accepts the offer to purchase all of the Offered Shares, the closing for such purchase of the Offered Shares by the Company under this Section 3.2(b) shall take place within thirty (30) days following the expiration of the Company Option Period, at the offices of the Purchaser or on such other date or at such other place as may be agreed to by the Purchaser and the Company.

 

(c)          Valuation of Property. In the event that the price set forth in the Offer Notice is stated in consideration other than cash or cash equivalents, the Purchaser and the Company shall mutually determine the fair market value of such consideration, reasonably and in good faith, and the Company may effect its purchase under this Section 3.2 by payment of such fair market value in cash or cash equivalents.

 

(d)          Sale to Third Party. In the event that the Company does not elect to exercise the rights to purchase under this Section 3.2 with respect to all of the Shares proposed to be sold, the Purchaser may sell all such Shares to the Buyer on the terms and conditions set forth in the Offer Notice. Prior to the effectiveness of any Transfer to a Buyer hereunder, such Buyer shall have entered into a joinder agreement pursuant to which such Buyer will assume all the obligations hereunder as if such Buyer were the Purchaser.

 

3.3          Lock-Up. The Purchaser agrees, if requested by the Company and any underwriter engaged by the Company, not to sell or otherwise transfer or dispose of any Shares (including, without limitation, pursuant to Rule 144 under the Securities Act) held by him, her or it for such period following the effective date of any registration statement of the Company filed under the Securities Act as the Company or such underwriter shall specify reasonably and in good faith. If requested by the underwriter engaged by the Company, the Purchaser shall execute a separate letter reflecting the agreement set forth in this Section 3.3.

 

3

 

 

3.4          Drag-Along Rights. In the event of an Acquisition in which the holders of a majority of the Common Stock of the Company (the “Approving Holders”) exercise the Drag-Along Right (as defined below), the Purchaser shall be obligated to and shall, upon the written request of such Approving Holders: (i) sell, transfer and deliver, or cause to be sold, transferred and delivered, to the third-party buyer a pro rata portion of Shares held by the Purchaser, on the same terms applicable to the Approving Holders and/or (ii) execute and deliver such instruments of conveyance and transfer and take such other action, including voting all Shares held by the Purchaser in favor of any Acquisition approved by the Approving Holders and executing any purchase agreements, merger agreements, escrow agreements or related documents, as the third-party buyer may reasonably require and that such Approving Holders shall have executed, in order to carry out the terms and provisions of this Section 3.5 (the “Drag-Along Right”). IN FURTHERANCE OF THE FOREGOING, FOR PURPOSES OF ANY ACQUISITION IN WHICH THE APPROVING HOLDERS ARE ENTITLED TO, AND DO, EXERCISE THE DRAG-ALONG RIGHT, THE PURCHASER HEREBY GRANTS TO THE DESIGNEE OF THE APPROVING HOLDERS AN IRREVOCABLE PROXY TO VOTE THE SHARES HELD BY THE PURCHASER IN FAVOR OF ANY ACQUISITION FOR WHICH THE DRAG-ALONG RIGHT IS APPLICABLE HEREUNDER. SUCH PROXY IS COUPLED WITH AN INTEREST AND IS VALID FOR A PERIOD OF TEN (10) YEARS FROM THE DATE OF THIS AGREEMENT.

 

4.             Representations and Warranties of the Purchaser. The Purchaser hereby represents and warrants as of the date hereof to the Company as follows:

 

4.1          Investment Representation. The Purchaser is an “accredited investor” under Regulation D of the U.S. Securities Act of 1933, as amended (the “Securities Act”). The Purchaser is aware that the Subscribed Shares have not been registered under the Securities Act, or qualified under any state securities laws. The Subscribed Shares are being acquired for investment purposes only and not for sale or with a view to distribution of all or any part thereof in violation of the securities laws.

 

4.2          Access to Information. The Purchaser has had an opportunity to ask questions and receive answers from the Company regarding the terms and conditions of its purchase of the Subscribed Shares and regarding the business, financial affairs and other aspects of the Company, and it has further had the opportunity to obtain any information (to the extent the Company possesses or can acquire such information without unreasonable effort or expense) which it deems necessary to evaluate its investment or to verify the accuracy of information otherwise provided to it.

 

4.3          Restricted Securities. The Purchaser understands that the Subscribed Shares will be characterized as “restricted securities” under the Securities Act and that under such laws and applicable regulations, the Subscribed Shares may be resold without registration under the Securities Act only in certain limited circumstances, and that otherwise the Subscribed Shares must be held indefinitely. The Purchaser further represents that it is familiar with Rule 144 promulgated under the Securities Act, as presently in effect, and the conditions which must be met in order for Rule 144 to be available for resale of “restricted securities,” and understands the resale limitations imposed by the Securities Act.

 

4

 

 

4.4        Authority. The Purchaser has all required power and authority to execute and deliver this Agreement and to perform its obligations hereunder. This Agreement has been duly and validly executed and delivered by The Purchaser and (assuming the due authorization, execution and delivery by the Company) constitutes the legal, valid and binding obligation of the Purchaser, enforceable against him in accordance with its terms.

 

4.5       Organization. The Purchaser is duly organized, validly existing and in good standing under the laws of the jurisdiction of its formation.

 

5.             Representations and Warranties of the Company. The Company represents and warrants as of the date hereof to the Purchaser as follows:

 

5.1       Authorization. The Company has all requisite corporate power and authority to execute and deliver this Agreement, sell the Subscribed Shares and otherwise perform its obligations hereunder. This Agreement has been duly and validly executed and delivered by the Company and (assuming the due authorization, execution and delivery by the Purchaser) this Agreement constitutes the legal, valid and binding obligation of the Company, enforceable against it in accordance with its terms.

 

5.2       Organization. The Company is a corporation duly organized, validly existing and in good standing under the laws of the State of Delaware.

 

6.             Miscellaneous.

 

6.1       Governing Law. This Agreement and all matters arising hereunder shall be governed by and construed under the laws of the State of Tennessee, without regard to its conflicts of law rules or provisions.

 

6.2       Severability. If any provision of this Agreement or the application of such provision to any person or circumstance shall be held by a court of competent jurisdiction to be invalid, illegal, or unenforceable under the applicable law of any jurisdiction, (i) the remainder of this Agreement or the application of such provisions to other persons or circumstances or in other jurisdictions shall not be affected thereby, (ii) such invalid, illegal, or unenforceable provision shall be deemed inoperative to the extent that it may conflict therewith and shall be deemed modified to conform with such law, and (iii) such invalid, illegal, or unenforceable provision shall not affect the validity or enforceability of any other provision of this Agreement.

 

6.3       Counterparts. This Agreement may be executed in one or more counterparts, each of which when so executed and delivered shall be deemed an original, and all of which when taken together shall constitute one and the same instrument. The execution of this Agreement may be by actual or facsimile signature.

 

6.4       Notwithstanding anything to the contrary herein, this Agreement, and all Shares received hereunder, may be Transferred by the Purchaser to the DOE or its designee without any notice to, or approval of Company upon the termination or expiration of Purchasers Prime Contract with the DOE; provided that any and all such transferees shall enter into a joinder agreement pursuant to which each such transferee will assume all the obligations hereunder as if such transferee were the Purchaser as a precondition to the effectiveness of such transfer.

 

[Reminder of Page Intentionally left Blank]

 

5

 

 

IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly executed, all as of the date first written above.

 

  COMPANY:
     
  908 DEVICES INC.
     
  By: /s/ Kevin Knopp
    Name:  Kevin Knopp
    Title: Chief Executive Officer and President

 

[Signature Page to Subscription Agreement]

 

 

 

  PURCHASER:
   
  UT-BATTELLE, LLC
     
  By: /s/ Michael J. Paulus
    Name: Michael J. Paulus
    Title: Director, Technology Transfer
         

 

 

[Signature Page to Subscription Agreement]

 

 

 

PLA-1670-PFTT

 

AMENDMENT 1

TO

LIMITED EXCLUSIVE COMMERCIAL FIELD OF USE PATENT

LICENSE AGREEMENT

 

Between

 

UT-BATTELLE, LLC

Operator of the Oak Ridge National Laboratory

Under its U.S. Department of Energy Contract No. DE-AC05-00OR22725

(hereinafter “UT-Battelle”)

 

AND

 

908 DEVICES, INC.

(hereinafter “Licensee”)

 

This Amendment 1, made effective on August 2, 2013 (“Effective Date”), is entered into by UT-Battelle and the Licensee, with both hereinafter referred to collectively as the “Parties.”

 

WITNESSETH:

 

WHEREAS, the Parties entered into Limited Exclusive Commercial Field of Use Patent License Agreement PLA-1670-PFTT having an effective date of June 13, 2012 (the “Agreement”), and WHEREAS, the Parties now desire to amend the Agreement to revise the field of use definition, NOW THEREFORE, the Parties agree to this Amendment 1 as follows: In Article 2,

 

DEFINITIONS, re-write “Field of Use 3” as follows:

 

“Field of Use 3: “Industrial process monitoring, which includes but is not limited to the following industrial process: exploration, production, and management of hydrocarbon and water reservoirs, and the development or management of facilities for storing fluids, such as carbon dioxide and natural gas, in subsurface reservoirs; and”

 

1

 

 

IN WITNESS WHEREOF, the Parties hereto have caused this Amendment 1 to be duly executed in their respective names by their duly authorized representatives.

 

UT-BATTELLE, LLC    
     
By: /s/ Michael J. Paulus  
Name:  Michael J. Paulus  
Title: Director, Technology Transfer  
Date: 6 Aug 2013    
       
908 DEVICES, INC.    
     
By: /s/ Kevin J Knopp    
Name: Kevin J Knopp    
Title: President & CEO    
Date: 8/5/13    

 

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Exhibit 10.8

 

PLA-1669

 

LIMITED EXCLUSIVE COMMERCIAL FIELD OF USE PATENT LICENSE AGREEMENT

 

This Exclusive Commercial Patent License Agreement is between UT-Battelle, LLC (UT-Battelle), a Tennessee non-profit limited liability company (“Licensor”), and 908 Devices Inc., a Delaware corporation having an address at 27 Drydock Avenue, 8th Floor, Boston, MA 02210 (“Licensee”), hereinafter referred to singly as the “Party” or jointly as the “Parties.”

 

ARTICLE 1

BACKGROUND

 

1.1 Licensor manages and operates the Oak Ridge National Laboratory under its Prime Contract No. DE-AC05-00OR22725 with the United States Department of Energy (“DOE”), an agency of the United States Government.

 

1.2 Licensor has rights in certain patents and patent applications listed in Exhibit A.

 

1.3 Licensee desires, and Licensor is willing to grant, an exclusive license under such patents and patent applications in certain fields of use.

 

1.4 This Agreement specifically includes Exhibit A, LICENSED PATENTS, Exhibit B, TERM SHEET & FINANCIAL OBLIGATIONS, Exhibit C, DEVELOPMENT AND COMMERCIALIZATION PLAN, and Exhibit D, SUBSCRIPTION AGREEMENT, which are attached.

 

1.5 Except as provided in Article 8, the license will run through the Term of this Agreement.

 

1.6 This Agreement is being executed by the Parties simultaneously with companion Patent License Agreement PLA-1670-PFTT (the “PLA-1670-PFTT License”).

 

ARTICLE 2

DEFINITIONS

 

2.1 As used in this Agreement, the following terms will have the meanings set forth below:

 

“Accounting Period” means the period from January 1 through December 31 of each year, with the first Accounting Period beginning on the Effective Date.

 

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“Combination Products” are Licensed Products which infringe or contribute to the infringement of a claim of patents or patent applications other than the Licensed Patents and to which Licensee has obtained an ownership interest or a royalty-bearing license.

 

“Combination Gross Sales” means the U.S. Dollar value of all consideration to which Licensee is entitled for the Disposition of Combination Products by Licensee. In the event Licensee does not, during the Term of this Agreement, Dispose of Combination Products that were made during the Term of this Agreement, the fair market value of such Combination Products (as if there had been a Disposition to a third party) will be included in Combination Gross Sales.

 

“Combination Net Sales” means the Combination Gross Sales, less the total of all:

 

a. sales tariffs, duties, taxes, or other governmental charges imposed on the Combination Products;

 

b. outbound transportation prepaid or allowed;

 

c. amounts allowed or credited on returns; and

 

d. normal and customary trade, quantity, cash and other similar discounts, actually taken, wholesaler chargebacks, and rebates.

 

For avoidance of doubt, Combination Net Sales shall not include, and shall be deemed to be zero, with respect to (i) the distribution of reasonable quantities of promotional samples of Combination Products and (ii) Combination Products provided for use in clinical trials, research purposes or charitable or compassionate use.

 

“Dispose” or “Disposition” means the sale, lease or other transfer of Licensed Products and/or Combination Products.

 

“Effective Date” means the date of the signature of the last Party to sign this Agreement. “Field(s) of Use” means and is limited to mass spectrometry used in the following Fields of Use:

 

Field of Use 1: Military, public safety, intelligence, national security, and homeland security, including chemical and biological warfare defense and explosives detection, whether such use is by public (governmental) employees, agencies or authorities or private entities;

 

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Field of Use 2: Clinical diagnostics, medical instrumentation, and analytical instruments for life sciences applications;

 

Field of Use 3: Industrial process monitoring; and

 

Field of Use 4: Food and environmental testing and safety.

 

“Government” means the Federal Government of the United States of America, including all of its agencies and authorities.

 

“Government’s License Rights” means the Government’s nonexclusive, nontransferable, irrevocable, paid-up license to practice or to have practiced for or on behalf of the United States the Licensed Patents throughout the world, pursuant to 35 USC 202(c)(4).

 

“Gross Sales” means the U.S. Dollar value of all consideration to which Licensee is entitled for the Disposition of Licensed Products by Licensee. In the event Licensee does not, during the Term of this Agreement, Dispose of Licensed Products that were made during the Term of this Agreement, the fair market value of such Licensed Products (as if there had been a Disposition to a third party) will be included in Gross Sales.

 

“Licensed Patents” means each patent and patent application listed in Exhibit A, and any patents issuing in any country at any time from such application and any divisions, continuations, continuations-in-part (excluding those claims in such continuations-in-part applications that do not relate to uses within the Field(s) of Use) thereof, and all reissues, reexaminations, substitutes, or extensions of any such patents, and all patent applications corresponding to any of the foregoing. The term “Licensed Patents” does not include any patent found to be unenforceable or invalid by a final adjudication by a Court of competent jurisdiction.

 

“Licensed Products” means any device, apparatus, product, compound, composition of matter, product-by-process, kit, system, material, or algorithm the manufacture, use, sale, offer for sale, or import of which, but for the license granted in this Agreement, would infringe or contribute to the infringement of a claim of a Licensed Patent.

 

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“Net Sales” means the Gross Sales less the total of all:

 

a. sales tariffs, duties, taxes, or other governmental charges imposed on the Licensed Products;

 

b. outbound transportation prepaid or allowed;

 

c. amounts allowed or credited on returns; and

 

d. normal and customary trade, quantity, cash and other similar discounts, actually taken, wholesaler chargebacks, and rebates.

 

For avoidance of doubt, Net Sales shall not include, and shall be deemed to be zero, with respect to (i) the distribution of reasonable quantities of promotional samples of Licensed Products and (ii) Licensed Products provided for use in clinical trials, research purposes or charitable or compassionate use.

 

“Patent Costs” means the verifiable costs related to the preparation, filing, prosecution and maintenance of U.S. and foreign Licensed Patents.

 

“Royalty” and “Royalties” mean the payments owed to Licensor specified in Exhibit B. “Sublicensee” means a third party to whom Licensee has granted a sublicense of rights granted under Section 3.1.

 

“Sublicensing Revenue” means the U.S. Dollar value of all consideration to which Licensee is entitled for the Disposition of Licensed Products by a Sublicensee, including any license fees, royalties and milestone payments or other consideration.

 

“Sublicensing Royalties” mean the payments owed to Licensor based on Sublicensing Revenue as specified in Exhibit B.

 

“Term” means the period of time starting on the Effective Date and continuing until expiration of the last to expire Licensed Patents.

 

ARTICLE 3

GRANT

 

3.1 Licensor grants to Licensee, and Licensee accepts for the Term of this Agreement, subject to the terms and conditions set forth herein, an exclusive license under the Licensed Patents to make, have made, use, offer to sell, sell, Dispose of, and import (subject to 6.1) the Licensed Products in the Field(s) of Use throughout the world. In addition, Licensor grants to Licensee and Licensee accepts for the Term of this Agreement, the right to grant sublicenses in accordance with Article 5 of this Agreement.

 

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3.2 Licensee’s exclusive commercial license is subject to, and will in no way restrict, the Government’s License Rights.

 

3.3 Licensee’s exclusive license is subject to, and will in no way restrict, the march-in rights of the Government pursuant to 35 USC 203.

 

3.4 Licensor retains the right to grant licenses to not-for-profit research and educational institutions solely to perform research for non-commercial purposes in the Field(s) of Use.

 

3.5 Licensor may, in its sole discretion, grant licenses to the Licensed Patents outside the Field(s) of Use.

 

3.6 Licensee acknowledges that no license is granted or implied under, and expressly agrees not to make, have made, use, offer to sell, sell, Dispose of, and import the Licensed Products outside the Field of Use. Licensee agrees that making, having made, using, offering to sell, selling, Disposing of, and importing the Licensed Products outside the Field of Use is a breach of this Agreement.

 

ARTICLE 4

CONSIDERATION AND FINANCIAL OBLIGATIONS

 

4.1 In consideration for the License, Licensee agrees to comply with the provisions of this Agreement, to issue the Equity Securities as set forth herein, to pay all fees, Royalties, costs, and all other consideration within the time periods and as otherwise specified in this Agreement for the Term, and to use commercially reasonable efforts to satisfy the requirements of the Commercialization Plan set forth in Exhibit C. Prompt payment of all amounts due to Licensor and satisfaction of the Commercialization Plan requirements are material to this Agreement.

 

4.2 Licensee will pay to Licensor a fixed license fee in the amount specified in Exhibit B (Execution Fee), which will be nonrefundable and not creditable against any Royalties. Exhibit B specifies when the Execution Fee is due and payable. In the event of termination of this Agreement, the entire unpaid balance of the Execution Fee will be due and payable on or before the effective date of termination.

 

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[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.

 

4.3 Licensee will reimburse Licensor for Patent Costs as provided in Exhibit B, Part G, within thirty (30) days of submission of the proof of costs incurred by Licensor. If Licensee elects to discontinue reimbursement of Patent Costs of any patent or patent application, then that patent or patent application will be excluded from the Licensed Patents, and all rights relating to the patent or patent application will revert to Licensor and may be freely licensed by Licensor to others.

 

4.4 All payments will be made to Licensor in U.S. dollars by wire transfer in accordance with the following wire instructions, unless and until written notice is provided by Licensor of a change in the wire instructions:

 

First Tennessee Bank, Memphis – [***]

For further credit to First Tennessee, Knoxville – [***]

Beneficiary UT-Battelle, LLC

S.W.I.F.T. Code is FTBMUS44

 

4.5 Licensee will owe no Royalties and no Sublicensing Royalties on its or any Sublicensee’s Dispositions of Licensed Products involving Government funds, including funds derived through a Military Assistance Program of the Government or otherwise derived through the Government, whether the Government is acting as the purchaser or the payor, because of the Government’s License Rights. Licensee will report all Revenue and Sublicensing Revenue received from such Dispositions by providing a Government control number and identification of the Government agency in the written report for the pertinent Accounting Period.

 

4.6 In the event that Licensee fails to make any payment due to Licensor within the time period prescribed for such payment under this Agreement, then the unpaid or overdue amount will bear interest at the rate of one and one half percent (1.5%) per month from the date when payment was due until payment in full, with interest, is made. In addition, Licensee agrees to reimburse Licensor for any costs or expenses, including attorney’s fees, incurred by Licensor in collection of such overdue payments.

 

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4.7 For avoidance of doubt, if royalties are paid under this Article 4 on “Net Sales” or “Combination Net Sales” of a Product, and such sale proceeds also qualify as “Net Sales” or “Combination Net Sales” under the PLA-1670-PFTT License, then the amounts so paid as royalties hereunder shall be fully creditable, on a dollar-for-dollar basis, against any royalties that would otherwise be due and payable under the PLA-1670-PFTT License.

 

ARTICLE 5

SUBLICENSES

 

5.1 All sublicenses must be in accordance with the terms of this Agreement.

 

5.2 Licensee will only enter into sublicenses that are not transferable by Sublicensees, and only transferable by Licensee to Licensor.

 

5.3 All sublicenses must be approved in writing by Licensor in advance of execution by Licensee. Such approval will not be unreasonably withheld by Licensor.

 

5.4 Effective on the date of termination of this Agreement for any reason prior to the end of the Term, Licensee hereby assigns to Licensor each approved sublicense that is in effect on the date of termination, including the right to receive all income from Sublicensees. Licensee will include notification of this provision in all sublicenses.

 

5.5 Licensee will provide a copy of each sublicense to Licensor within thirty (30) days of the execution of each sublicense.

 

5.6 Licensee will pay to Licensor Sublicensing Royalties in the amounts and at the times specified in Exhibit B.

 

5.7 Subject to Article 9, Licensee must enforce all sublicenses at its cost. The Licensee will be responsible for the acts or omissions of its Sublicensees. Each sublicense granted by the Licensee will include an audit right by Licensor of the same scope as provided in Article 7 with respect to the Licensee and will include Licensor’s right to enforce the Licensed Patents. No sublicense agreement will contain any provision which would cause the grant to extend beyond the Term of this Agreement.

 

5.8 Licensee will require Sublicensees (a) to keep records and submit reports to Licensee of the same type and for the same Accounting Periods as required in Article 7, and (b) to submit to Licensor at the same time Licensee is required to submit a written report under Article 7, a report of all uses and Dispositions and the amount of payments made to Licensee in connection with such use.

 

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5.9 Licensee will not grant to Sublicensees the right to grant sublicenses or the right to enforce any Licensed Patent.

 

5.10 For avoidance of doubt, if amounts are paid under this Article 4 as a percentage of Sublicensing Revenues, and such amounts also qualify as “Sublicensing Revenues” under the PLA-1670-PFTT License, then the amounts so paid as a percentage of Sublicensing Revenues hereunder shall be fully creditable, on a dollar-for-dollar basis, against any amounts that would otherwise be due and payable under the PLA-1670-PFTT License as a percentage of “Sublicensing Revenues.”

 

ARTICLE 6

CONDITIONS OF GRANT

 

6.1 Licensee agrees that any Licensed Products for use or sale in the United States will be substantially manufactured in the United States as and to the extent required by U.S. law, Department of Energy Regulations and Licensor’s Prime Contract. Licensee will include this U.S. manufacture requirement in all sublicenses that Licensee grants.

 

6.2 Licensee will mark all Licensed Products in accordance with the statutes of the United States relating to marking of patented articles (see 35 U.S.C. § 287). Licensee will include this marking requirement in all sublicenses that Licensee grants. Any such marking may indicate that Licensee has a license from Licensor. Otherwise, Licensee is prohibited from using Licensor’s name or the name “Oak Ridge National Laboratory” in any such marking or any advertising, promotion or commercialization of Licensed Products without written approval of Licensor; provided however, that Licensee shall be permitted to disclose factual information concerning the source of the rights licensed hereunder, for example, by identifying Licensor as the licensor of the rights hereunder or by identifying Oak Ridge National Laboratory as the institution where the Licensed Patents were invented, provided that such disclosures are not promotional in nature and do not suggest an endorsement of any Licensed Product by Licensor, Oak Ridge National Laboratory, the U.S. government, or any of their affiliates or agencies.

 

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6.3 The rights and licenses granted by Licensor in this Agreement are personal to Licensee and may not be assigned or otherwise transferred in whole or in part except by (i) the sale of all or substantially all of the assets of the Company on a consolidated basis to an unrelated person or entity, (ii) a merger, reorganization or consolidation in which the outstanding shares of the Company’s capital stock are converted into or exchanged for securities of the successor entity and the holders of the Company as outstanding voting power immediately prior to such transaction do not own at least a majority of the outstanding voting power of the successor entity immediately upon completion of such transaction, or (iii) the sale, in a single transaction or series of related transactions, of all or a majority of the Company as capital stock to an unrelated person or entity (an “Acquisition”). In the event of an Acquisition, Licensee may assign its rights and obligations under this Agreement to the merging or acquiring entity, effective on the date the merger or acquisition becomes effective, provided that all the following requirements have been satisfied in advance of the merger or acquisition:

 

6.3.1 Licensee notifies Licensor within forty-five (45) calendar days prior to said merger or acquisition;

 

6.3.2 Licensors approve the other parties involved in such transaction, it being understood that such approval by Licensors may only be refused if any such other party is a Restricted Entity;

 

6.3.3 Licensee shall have paid all royalties, fees and payments due Licensor;

 

6.3.4 The merging or acquiring entity has agreed to comply with the terms and conditions of this Agreement; and

 

6.3.5 If the merging or acquiring entity is subject to ownership or control by a non-U.S. entity, the Licensee has obtained DOE approval of the assignment and will comply with the DOE’s foreign ownership and control justification criteria then in effect.

 

For purposes of this Section 6.3, the term “Restricted Entity” means any person or entity identified on the Denied Persons List published by the Bureau of Industrial Security, or any entity incorporated or having a principle place of business in an embargoed country as defined in Part 746 of the Export Administration Regulations.

 

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6.4. Licensee will not pledge its rights under this Agreement for any reason, including as security to obtain financing, without the prior written approval of Licensor. The Parties agree that any such pledge by Licensee without such approval by Licensor will be an automatic, material and incurable breach of the Agreement resulting in termination of the Agreement effective as of the attempt by Licensee to make such pledge.

 

6.5. Licensee hereby agrees that, in the event Licensee, by its own actions, or the action of any of its shareholders or creditors, files or has filed against it a case under the Bankruptcy Code of 1978, as previously or hereafter amended, Licensor shall be entitled to relief from the automatic stay of Section 362 of Title 11 of the U.S. Code, as amended, to pursue any rights and remedies available to it under the License. Licensee hereby waives the benefits of such automatic stay and consents and agrees to raise no objection to such relief.

 

ARTICLE 7

RECORDS, REPORTS, AND ROYALTY PAYMENTS

 

7.1 Licensee will keep and make available to Licensor for audit, inspection and copying by Licensor or its designee, including an accounting firm, adequate and sufficiently detailed records to enable Licensee’s financial obligations, including obligations incurred as a result of sublicensing in accordance with 5.6, if applicable, required under this Agreement to be easily determined. Licensee will maintain these records for a period of three (3) years after the end of the last Accounting Period to which the records refer. In the event an examination of Licensee’s records reveals an underpayment of more than 5% of the accurate Royalty amount, Licensee will pay all costs incurred by Licensor related to the examination of records in addition to paying the balance due.

 

7.2. Licensee will provide Licensor a written report for each Accounting Period during the Term of this Agreement, no later than thirty (30) days after the end of each Accounting Period, that identifies for such Accounting Period:

 

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(a) the total Gross Sales received by Licensee from the making, use, or Disposition of Licensed Products itemized by domestic and/or foreign rights;

 

(b) the total amount of sales tariffs, duties and/or taxes imposed on the Licensed Products manufactured in the United States;

 

(c) the total outbound transportation costs prepaid or allowed;

 

(d) the total amounts allowed or credited on returns; and,

 

(e) the total amount of Royalties due to Licensor.

 

The first such report will include this information for all Licensed Products Disposed of between the Effective Date and the end of the first Accounting Period.

 

7.3 Licensee will submit a written report to Licensor within thirty (30) days after the date of any termination or expiration of this Agreement which contains the same information required in 7.2 above for Licensed Products made, used, or Disposed of prior to such expiration or termination that were not previously reported to Licensor. At the time this report is submitted, Licensee will pay to Licensor all Royalties and any other consideration due Licensor.

 

ARTICLE 8

BREACH AND TERMINATION

 

8.1 This Agreement may be terminated by either Party for any material breach of the Agreement by the other Party. Such termination will be effective sixty (60) days after written notice specifying the breach to the other Party. If the specified breach is cured before the effective date of termination, the Agreement will not be terminated.

 

8.2 In the event Licensee either (a) fails to make payment to Licensor of Royalties or other consideration in accordance with this Agreement or (b) fails to use commercially reasonable efforts to satisfy the requirements of the Commercialization Plan in Exhibit C, Licensor may, at its sole discretion, terminate this Agreement with respect to specified Licensed Patents. Such a termination shall not terminate any obligations which have accrued as of the date of such termination, including any obligation to pay any Royalties.

 

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8.3 In addition to termination, in the event of a material breach by Licensee, Licensor may pursue any rights and remedies available to it by law.

 

8.4 This Agreement will not be terminated for any breach that is the result of an act of God, acts or omissions of any government or agency thereof, compliance with rules, regulations, or orders of any governmental authority or any office, department, agency, or instrumentality thereof, fire, storm, flood, earthquake, accident, acts of the public enemy or terrorism, war, rebellion, insurrection, riot, sabotage, invasion, quarantine, restriction, transportation embargoes, or failures or delays in transportation.

 

8.5 Any termination of this Agreement will not impact Licensor’s ownership interest, if any, in Licensee.

 

8.6 The rights and remedies granted herein, and any other rights or remedies which the Parties may have, either at law or in equity, are cumulative and not exclusive of others.

 

8.7 Neither Party will be relieved of any obligation or liability under this Agreement arising from any act or omission committed prior to the termination date. Upon termination, Licensee will execute any documents necessary to achieve the transfer to Licensor of all rights to which Licensor may be entitled under this Agreement.

 

8.8 Licensee may terminate this Agreement for any reason if Licensee provides Licensor with sixty (60) calendar days prior notice of its intent to terminate and pays Licensor all patent reimbursement fees owed at the time or termination, if applicable, and all other fees and Royalties due or the pro rata portion of any Minimum Annual Royalties due in, or at the end of, the year of termination under Exhibit B, whichever is greater.

 

8.9 This Agreement will terminate automatically upon a final adjudication of invalidity, unenforceability, or the extinguishment of all Licensed Patents, for any reason.

 

8.10 This Agreement will terminate automatically if Licensee contests the validity or enforceability of any Licensed Patent, or requests reexamination of any Licensed Patent.

 

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8.11 Licensee will terminate a sublicense automatically if the Sublicensee contests the validity or enforceability of any Licensed Patent, or requests reexamination of any Licensed Patent.

 

8.12 Expiration or termination of this Agreement will be without prejudice to any rights that may have accrued to the benefit of a Party prior to such expiration or termination.

 

8.13 This Agreement will terminate automatically upon the termination or expiration, whichever occurs first, of the PLA-1670-PFTT License.

 

ARTICLE 9

INFRINGEMENT

 

9.1 Licensee will notify Licensor in writing of any suspected infringement of the Licensed Patents in the Field of Use, and each Party will inform the other of any evidence of such suspected infringement within a reasonable time of obtaining such evidence.

 

9.2 Licensee will have the right during the term of this Agreement to institute, prosecute, and settle at its own expense suits for infringement of the Licensed Patents for any infringement occurring within the Field of Use, and if required by law, Licensor will join as party plaintiff in such suit. Licensee shall obtain Licensor’s consent before instituting any such action, such consent not to be unreasonably withheld. For avoidance of doubt, it shall not be unreasonable for Licensor to withhold such consent in the event that the proposed enforcement action would reasonably be anticipated to result in a narrowing of the scope of any of the Licensed Patents or a finding that the asserted claims of a Licensed Patent are invalid. Licensee shall not be permitted to settle any such action in a manner that limits the scope of any Licensed Patent or that admits liability or fault on the part of the Licensor. Licensee will be entitled to retain all damages and any other consideration recovered at successful conclusion of the suit.

 

9.3 In the event Licensee decides not to bring any such suit, Licensee will so notify Licensor and Licensor may bring such suit. Where such suit is brought by Licensor, Licensor will be entitled to retain all damages and any other consideration recovered at successful conclusion of the suit.

 

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9.4 Licensor will have the right in its absolute discretion during the Term of this Agreement to commence suits for infringement of the Licensed Patents for any infringement outside the Field of Use.

 

9.5 Notwithstanding the pendency of any infringement (or other) claim or action by or against Licensee, Licensee will have no right to reduce, terminate or suspend (or escrow) payment of any amounts required to be paid to Licensor pursuant to this Agreement.

 

ARTICLE 10

REPRESENTATIONS AND WARRANTIES

 

10.1 Licensee represents and warrants that it will not export any technical information (or the direct product thereof) furnished to Licensee, either directly or indirectly by Licensor in the grant of license to the Licensed Patents, from the United States of America, directly or indirectly without first complying with all requirements of the Export Administration Regulations, including the requirement for obtaining any export license, if applicable. Licensee will indemnify, defend and hold harmless Licensor, DOE, their respective members, officers, directors, agents, employees, and persons acting on their behalf, (“Indemnitees”) from liability involving the violation of such export regulations, either directly or indirectly, by Licensee.

 

10.2 Licensee will indemnify, defend and hold harmless Licensor, DOE, their respective members, officers, directors, agents, employees, and persons acting on their behalf, (“Indemnitees”) from liability involving the violation of such export regulation, either directly or indirectly, by Licensee.

 

10.3 Licensee acknowledges it may be subject to criminal liability under U.S. laws for Licensee’s failure to obtain any required export license.

 

10.4 Licensee agrees to indemnify and hold harmless Indemnitees from and against any and all liabilities, penalties, fines, forfeitures, claims, demands, causes of action, damages, and costs and expenses (including the costs of defense, prosecution and/or settlement, including, but not limited to, attorney’s fees) incurred in connection with any action asserted by a third party, and caused by, arising out of or related to, in whole or in part, Licensee’s and/or any Sublicensee’s exercise of rights under this Agreement or any other action or inaction relating to Licensed Patents, Licensed Products, or Licensed Processes, including, but not limited to, claims or demands of product liability, personal injury, death, damage to property or violation of any laws or regulations, except for those arising from Licensor’s negligence or breach of this Agreement or the PLA-1670-PFTT Agreement.

 

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Licensor represents that (i) it has the right to grant all of the rights granted herein, subject to the rights of the Government of the United States of America referenced in Article 3, and (ii) all inventors of the inventions claimed in the Licensed Patents have assigned all of their right, title and interest in and to such inventions, and in and to such patents, to Licensor.

 

ARTICLE 11

DISCLAIMERS

 

11.1 NEITHER LICENSOR, DOE, NOR PERSONS ACTING ON THEIR BEHALF WILL BE RESPONSIBLE FOR ANY INJURY TO OR DEATH OF PERSONS OR OTHER LIVING THINGS OR DAMAGE TO OR DESTRUCTION OF PROPERTY OR FOR ANY OTHER LOSS, DAMAGE, OR INJURY OF ANY KIND WHATSOEVER RESULTING FROM LICENSOR’S GRANT OF LICENSE TO LICENSEE UNDER THIS AGREEMENT.

 

11.2 ALL LICENSED PATENTS, INFORMATION, MATERIALS OR SERVICES FURNISHED UNDER OR WITH THIS AGREEMENT (“DELIVERABLES”) ARE PROVIDED ON AN “AS IS” BASIS. NEITHER LICENSOR, DOE, NOR PERSONS ACTING ON THEIR BEHALF MAKE ANY REPRESENTATIONS, OR EXTEND ANY WARRANTIES, EITHER EXPRESS OR IMPLIED: (a) WITH RESPECT TO THE VALIDITY OF THE LICENSED PATENTS; (b) WITH RESPECT TO THE MERCHANTABILITY, ACCURACY, COMPLETENESS, FITNESS FOR USE OR USEFULNESS OF ANY DELIVERABLES; (c) THAT THE USE OF ANY SUCH DELIVERABLES WILL NOT INFRINGE PRIVATELY OWNED RIGHTS; (d) THAT THE DELIVERABLES WILL NOT RESULT IN INJURY OR DAMAGE WHEN USED FOR ANY PURPOSE; (e) THAT THE DELIVERABLES WILL ACCOMPLISH THE INTENDED RESULTS OR ARE SAFE FOR ANY PURPOSE, INCLUDING THE INTENDED OR PARTICULAR PURPOSE; OR (f) WITH RESPECT TO USE, OR DISPOSITION BY LICENSEE OR ITS VENDEES OR OTHER TRANSFEREES OF LICENSED PRODUCTS INCORPORATING OR MADE BY USE OF (1) INVENTIONS LICENSED UNDER THIS AGREEMENT OR (2) INFORMATION, IF ANY, FURNISHED UNDER THE AGREEMENT. FURTHERMORE, LICENSOR AND DOE HEREBY SPECIFICALLY DISCLAIM ANY AND ALL WARRANTIES, EXPRESS OR IMPLIED, FOR ANY LICENSED PRODUCTS RESULTING FROM LICENSOR’S GRANT OF LICENSE HEREUNDER. IT IS AGREED THAT NEITHER LICENSOR NOR DOE WILL BE LIABLE FOR CONSEQUENTIAL, SPECIAL, OR INCIDENTAL DAMAGES IN ANY EVENT. LICENSEE AND ITS SUBLICENSEES WILL MAKE NO WARRANTY, EXPRESS OR IMPLIED, ON BEHALF OF LICENSOR OR THE DOE.

 

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11.3 Nothing in this Agreement will be construed as

 

a. an obligation of the Licensor to bring or prosecute actions or suits against third parties for infringement (except to the extent and in the circumstances stated in Article 9); or

 

b. an obligation of the Licensor to furnish any manufacturing or technical information or technical assistance, or

 

c. conferring a right to use in advertising, publicity, or otherwise any trademark or name of Licensor (except to the extent stated in 6.2); or

 

d. granting by implication, estoppel, or otherwise, any licenses or rights under patents of Licensor other than Licensed Patents, regardless of whether such other patents are dominant of or subordinate to any Licensed Patents.

 

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ARTICLE 12

GENERAL

 

12.1 All notices and reports will be addressed to the Parties as follows:

 

If to Licensor:  
   
Accounting Administration, Partnerships Facsimile
UT-Battelle, LLC (865) 576-9465
One Bethel Valley Road Phone
Oak Ridge, Tennessee 37831-6196 (865) 241-2353
  E-Mail Collinssm1©ornl.gov
   
If to Licensee:  
   
Kevin Knopp Facsimile
908 Devices Inc. (978) 909-9004
27 Drydock Avenue, 8th Floor Phone
Boston, MA 02210 (978) 729-4478

 

12.2 All stock certificates, if any, will be sent to the address for notices.

 

12.3 Any notice, report or any other communication required to be given will be in writing and delivered either: (a) personally, (b) by express, registered or certified first-class mail, (c) by commercial courier, or (d) by facsimile with machine confirmation of transmission.

 

12.4 The failure of either Party to enforce a provision of this Agreement or to exercise any right or remedy will not be a waiver of such provision or of such rights or remedies or the right of the Parties thereafter to enforce each and every provision, right or remedy.

 

12.5 This Agreement may be amended or modified only by a written instrument signed by both Parties.

 

12.6 The determination by a Court of competent jurisdiction that any part, term, or provision of this Agreement is illegal or unenforceable, will not affect the validity of the remaining provisions of this Agreement.

 

12.7 Licensor may assign this Agreement and all rights, duties and obligations hereunder, to DOE or a successor contractor to Licensor, as may be required under its prime contract with DOE.

 

17

 

 

12.8 This Agreement will be construed according to the laws of the State of Tennessee and the United States of America and in the English language. Any action brought to enforce any provision or obligation hereunder will be brought in the Federal District Court for the Eastern District of Tennessee. However, if jurisdiction is not found in Federal Court, actions will be brought in Tennessee in either Knox, Roane, or Anderson County Court.

 

12.9 This Agreement is solely for the benefit of the Parties, represents the entire and integrated agreement between the Parties, and supercedes all prior negotiations, representations, and agreements, either written or oral. This Agreement, and each and every provision thereof, is for the exclusive benefit of Licensor and Licensee and not for the benefit of any third party, except to the extent expressly provided in the Agreement.

 

ARTICLE 13

OFFER

 

The offer to execute this Agreement shall expire if this Agreement is not signed by Licensee and returned to Licensor on or before June 15, 2012.

 

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IN WITNESS WHEREOF, each of the Parties hereto has caused this Agreement of be executed in duplicate originals by its duly authorized officers or representatives.

 

UT-BATTELLE, LLC

 

By: /s/ Michael J. Paulus  
Name:  Michael J. Paulus  
Title: Director, Technology Transfer    
Date: 8 June 2012    
       
908 DEVICES INC.    
     
By: /s/ Kevin J Knopp    
Name: Kevin J Knopp    
Title: President & CEO    
Date: 6/13/12    

 

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EXHIBIT A: LICENSED PATENTS

 

Docket
No. 		Country Title Inventor(s) Ser. No./Pat. No. Filing/Issue
Date
683 US Microscale ion trap mass spectrometer John M. Ramsey; William B. Whitten; Oleg Kornienko 6,469,298 10/22/2002
683 JP Microscale ion trap mass spectrometer John M. Ramsey; William B. Whitten; Oleg Kornienko 2001-5252000 9/20/2000
683 UK Microscale ion trap mass spectrometer John M. Ramsey; William B. Whitten; Oleg Kornienko 1218921 6/11/2008
683 DE Microscale ion trap mass spectrometer John M. Ramsey; William B. Whitten; Oleg Kornienko 1218921 6/11/2008
1505 US Controlled Kinetic energy Ion Source for Miniature Ion Trap and Related Spectroscopy System and Method Verbeck, Whitten, Moxom 7,838,820 11/23/2010

 

  Initials  
  UT-Battelle:
  Date: 6/8/12
  Licensee:
  Date: 6/13/12

 

 

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EXHIBIT B: TERM SHEET & FINANCIAL OBLIGATIONS

 

A.          Type of License:

 

Field of Use Exclusive

 

B.          Field(s) of Use:

 

Field of Use 1:       Military, public safety, intelligence, national security, and homeland security, including chemical and biological warfare defense and explosives detection, whether such use is by public (governmental) employees, agencies or authorities or private entities.

 

Field of Use 2:      Clinical diagnostics, medical instrumentation, and analytical instruments for life sciences applications.

 

Field of Use 3:      Industrial process monitoring.

 

Field of Use 4:      Food and environmental testing and safety.

 

C.          Execution Fee:

 

1)       Cash Payments

This Agreement is being entered into by the Parties simultaneously with PLA-1670-PFTT License. A percentage of the Cash Payments paid by Licensee under PLA-1670-PFTT License will be deemed to be the Cash Payments for this Agreement. For avoidance of doubt, no additional amount shall be payable hereunder as a Cash Payment.

 

2)       Grant of Equity

A percentage of the Equity issued by Licensee under PLA-1670-PFTT License will be deemed to be the Equity issued to Licensee under this Agreement. For avoidance of doubt, no additional Equity will be issued by Licensee under this Agreement.

 

D.          Running Royalty Rate Structure:

 

1)       A percentage of the Net Sales Royalty paid by Licensee under PLA-1670-PFTT License will be attributed to the Net Sales Royalty for this Agreement. For avoidance of doubt, no Net Sales Royalty will be due or payable under this Agreement.

2)       A percentage of the Combination Net Sales Royalty paid by Licensee under PLA-1670-PFTT License will be attributed to the Combination Net Sales Royalty for this Agreement. For avoidance of doubt, no Combination Net Sales Royalty will be due or payable under this Agreement.

 

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E.           Annual Minimum Royalty:

 

A percentage of the Annual Minimum Royalty paid by Licensee under PLA-1670-PFTT License will be attributed to the Annual Minimum Royalty for this Agreement. For avoidance of doubt, no Annual Minimum Royalty will be due or payable under this Agreement.

 

F.           Sublicense Revenue:

 

A percentage of the Sublicensing Revenue paid by Licensee under PLA-1670-PFTT License will be attributed to the Sublicensing Revenue for this Agreement. For avoidance of doubt, no Sublicensing Revenue will be due or payable under this Agreement.

 

G.          Reimbursement of Patent Costs:

 

Licensee will reimburse Licensor for Patent Costs in accordance with Paragraph 4.4 of the Agreement as follows:

1. patent costs after January 3, 2014 based on U.S. Licensed Patents, and

2. patent costs after the Effective Date of this Agreement based on Licensed Patents that are not U.S. Licensed Patents.

 

NOTICE

 

This Exhibit contains financial and commercial information that is BUSINESS SENSITIVE and the Parties hereby agree not to use or disclose this Exhibit to any third party without the advance written approval of the other Party, except: (1) to those necessary to enable the Parties to perform under this Agreement; (2) as may be required by the UT-Battelle Prime Contract with the DOE under the same restrictions as set forth herein; or (3) in event of breach of any provision of this Agreement by either Party, to those deemed necessary by the non-breaching Party to enforce the non-breaching Party’s rights under the Agreement.

 

  Initials  
  UT-Battelle:
  Date: 6/8/12
  Licensee:
  Date: 6/13/12

 

 

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EXHIBIT C: DEVELOPMENT AND COMMERCIALIZATION PLAN

 

Licensee agrees to the complete milestones as set forth in Exhibit C of PLA-1670-PFTT.

 

NOTICE

 

This Exhibit contains financial and commercial information that is BUSINESS SENSITIVE and the Parties hereby agree not to use or disclose this Exhibit to any third party without the advance written approval of the other Party, except: (1) to those necessary to enable the Parties to perform under this Agreement; (2) as may be required by the UT-Battelle Prime Contract with the DOE under the same restrictions as set forth herein; or (3) in event of breach of any provision of this Agreement by either Party, to those deemed necessary by the non-breaching Party to enforce the non-breaching Party’s rights under the Agreement.

 

  Initials  
  UT-Battelle:
  Date: 6/8/12
  Licensee:
  Date: 6/13/12

 

 

23

 

 

EXHIBIT D SUBSCRIPTION AGREEMENT

(attached)

 

24

 

 

 

SUBSCRIPTION AGREEMENT

 

This Subscription Agreement (the “Agreement”) is made and entered into as of 6/13, 2012 (the “Effective Date”), by and between 908 Devices Inc., a Delaware corporation (the “Company”), and UT-Battelle, LLC, managing and operating the Oak Ridge National Laboratory under its Prime Contract No. DE-AC05-00OR22725 with the United States Department of Energy (“DOE”), an agency of the United States Government. (the “Purchaser”).

 

WHEREAS, the Company and the Purchaser entered into a Limited Exclusive Commercial Field of Use Patent License Agreement (the “License Agreement”) dated as of the Effective Date, pursuant to which the Purchaser is granting, and the Company is receiving a license (the “License”) for certain valuable inventions, the consideration for which includes shares of the capital stock of the Company.

 

WHEREAS, on the terms and subject to the conditions set forth herein, the Purchaser desires to subscribe for, and the Company proposes to issue to the Purchaser, one hundred and twenty thousand (120,000) shares (together with any other such shares as are issued to Purchaser in accordance with the License Agreement, the “Subscribed Shares”) of the Company’s Common Stock, par value $0.001 per share (the “Common Stock”) as partial consideration for the License.

 

NOW, THEREFORE, in consideration of the foregoing and of the mutual covenants and obligations hereinafter set forth and of other good and valuable consideration, the adequacy and receipt of which are hereby acknowledged, the parties hereto, intending to be legally bound, hereby agree as follows:

 

1.             Defined Terms. The following capitalized terms, as used in this Agreement, shall have the meanings set forth below.

 

1.1         “Acquisition” means the consummation of (i) the dissolution or liquidation of the Company, (ii) the sale of all or substantially all of the assets of the Company on a consolidated basis to an unrelated person or entity, (iii) a merger, reorganization or consolidation in which the outstanding shares of the Company’s capital stock are converted into or exchanged for securities of the successor entity and the holders of the Company as outstanding voting power immediately prior to such transaction do not own at least a majority of the outstanding voting power of the successor entity immediately upon completion of such transaction, or (iv) the sale, in a single transaction or series of related transactions, of all or a majority of the Company as capital stock to an unrelated person or entity.

 

1.2         “Person” shall mean an individual, a corporation, a partnership, a joint venture, a trust, an unincorporated organization, a limited liability company, a government and any agency or political subdivision thereof.

 

1.3         “Securities Act” shall mean the Securities Act of 1933, as it may be amended from time to time, and the rules and regulations thereunder.

 

 

 

1.4         “Shares” shall means, at any time, shares of (i) common stock, and (ii) any other equity securities now or hereafter issued by the Company, together with any options thereon and any other shares of stock issued or issuable with respect thereto (whether by way of a stock dividend, stock split or in exchange for or upon conversion of such shares or otherwise in connection with a combination of shares, recapitalization, merger, consolidation or other corporate reorganization).

 

1.5         “Stockholders” shall mean all holders of capital stock of the Company.

 

1.6         “Transfer” shall mean any direct or indirect transfer, donation, sale, assignment, pledge, hypothecation, grant of a security interest in or other disposal or attempted disposal of all or any portion of a security, any interest or rights in a security, or any rights under this Agreement. “Transferred” means the accomplishment of a Transfer, and “Transferee” means the recipient of a Transfer.

 

2.             Purchase and Sale of Subscribed Shares.

 

2.1       Purchase and Sale of Subscribed Shares. Subject to the terms and conditions set forth herein and in the License Agreement, upon the execution hereof, the Company shall Transfer to the Purchaser, and the Purchaser shall accept from the Company, the Subscribed Shares as partial consideration of the License.

 

2.2       Delivery of Certificates Representing Purchased Subscribed Shares. The Company shall deliver to the Purchaser a certificate in the name of the Purchaser representing the Subscribed Shares transferred to the Purchaser.

 

3.             Restrictions on Transfer; Right of Refusal; Drag-Along Right

 

3.1       Restrictions on Transfer. Except as allowed in Section 6.4 below, Purchaser agrees that it will not, without the prior written consent of the Board of Directors of the Company, Transfer all or any portion of the Shares now owned or hereafter acquired by the Purchaser, except in connection with, and strictly in compliance with the conditions of this Section 3.

 

3.2       Right of Refusal. In the event that the Purchaser entertains a bona fide offer to purchase all or any portion of the Shares held by the Purchaser (a “Transaction Offer”) from any other Person (a “Buyer”), such Purchaser may, at its discretion, Transfer such Shares pursuant to and in accordance with the following provisions of this Section 3.2:

 

(a)       Offer Notice. The Purchaser shall cause the Transaction Offer and all of the terms thereof to be reduced to writing and shall promptly notify the Company of such Purchaser’s desire to effect the Transaction Offer and otherwise comply with the provisions of this Section 3.2 (such notice, the “Offer Notice”). The Purchaser’s Offer Notice shall constitute an irrevocable offer to sell all, but not less than all, of the Shares which are the subject of the Transaction Offer (the “Offered Shares”) to the Company, on the basis described below, at a purchase price equal to the price contained in, and on the same terms and conditions of, the Transaction Offer. The Offer Notice shall be accompanied by a true copy of the Transaction Offer (which, to the extent permitted by the terms of the Transaction Offer, shall identify the Buyer and all relevant information in connection therewith).

 

2

 

 

(b)         Company Option. The Company shall have the option to purchase all or a portion of the Offered Shares. At any time within twenty (20) days after receipt by the Company of the Offer Notice (the “Company Option Period”), the Company may elect to accept the offer to purchase with respect to any or all of the Offered Shares and shall give written notice of such election (the “Company Acceptance Notice”) to the Purchaser within the Company Option Period, which notice shall indicate the number of Shares that the Company is willing to purchase. The Company Acceptance Notice shall constitute a valid, legally binding and enforceable agreement for the sale and purchase of the Shares covered by the Company Acceptance Notice. If the Company accepts the offer to purchase all of the Offered Shares, the closing for such purchase of the Offered Shares by the Company under this Section 3.2(b) shall take place within thirty (30) days following the expiration of the Company Option Period, at the offices of the Purchaser or on such other date or at such other place as may be agreed to by the Purchaser and the Company.

 

(c)          Valuation of Property. In the event that the price set forth in the Offer Notice is stated in consideration other than cash or cash equivalents, the Purchaser and the Company shall mutually determine the fair market value of such consideration, reasonably and in good faith, and the Company may effect its purchase under this Section 3.2 by payment of such fair market value in cash or cash equivalents.

 

(d)         Sale to Third Party. In the event that the Company does not elect to exercise the rights to purchase under this Section 3.2 with respect to all of the Shares proposed to be sold, the Purchaser may sell all such Shares to the Buyer on the terms and conditions set forth in the Offer Notice. Prior to the effectiveness of any Transfer to a Buyer hereunder, such Buyer shall have entered into a joinder agreement pursuant to which such Buyer will assume all the obligations hereunder as if such Buyer were the Purchaser.

 

3.3          Lock-Up. The Purchaser agrees, if requested by the Company and any underwriter engaged by the Company, not to sell or otherwise transfer or dispose of any Shares (including, without limitation, pursuant to Rule 144 under the Securities Act) held by him, her or it for such period following the effective date of any registration statement of the Company filed under the Securities Act as the Company or such underwriter shall specify reasonably and in good faith. If requested by the underwriter engaged by the Company, the Purchaser shall execute a separate letter reflecting the agreement set forth in this Section 3.3.

 

3

 

 

3.4          Drag-Along Rights. In the event of an Acquisition in which the holders of a majority of the Common Stock of the Company (the “Approving Holders”) exercise the Drag-Along Right (as defined below), the Purchaser shall be obligated to and shall, upon the written request of such Approving Holders: (i) sell, transfer and deliver, or cause to be sold, transferred and delivered, to the third-party buyer a pro rata portion of Shares held by the Purchaser, on the same terms applicable to the Approving Holders and/or (ii) execute and deliver such instruments of conveyance and transfer and take such other action, including voting all Shares held by the Purchaser in favor of any Acquisition approved by the Approving Holders and executing any purchase agreements, merger agreements, escrow agreements or related documents, as the third-party buyer may reasonably require and that such Approving Holders shall have executed, in order to carry out the terms and provisions of this Section 3.5 (the “Drag-Along Right”). IN FURTHERANCE OF THE FOREGOING, FOR PURPOSES OF ANY ACQUISITION IN WHICH THE APPROVING HOLDERS ARE ENTITLED TO, AND DO, EXERCISE THE DRAG-ALONG RIGHT, THE PURCHASER HEREBY GRANTS TO THE DESIGNEE OF THE APPROVING HOLDERS AN IRREVOCABLE PROXY TO VOTE THE SHARES HELD BY THE PURCHASER IN FAVOR OF ANY ACQUISITION FOR WHICH THE DRAG-ALONG RIGHT IS APPLICABLE HEREUNDER. SUCH PROXY IS COUPLED WITH AN INTEREST AND IS VALID FOR A PERIOD OFTEN (10) YEARS FROM THE DATE OF THIS AGREEMENT.

 

4.             Representations and Warranties of the Purchaser. The Purchaser hereby represents and warrants as of the date hereof to the Company as follows:

 

4.1          Investment Representation. The Purchaser is an “accredited investor” under Regulation D of the U.S. Securities Act of 1933, as amended (the “Securities Act”). The Purchaser is aware that the Subscribed Shares have not been registered under the Securities Act, or qualified under any state securities laws. The Subscribed Shares are being acquired for investment purposes only and not for sale or with a view to distribution of all or any part thereof in violation of the securities laws.

 

4.2          Access to Information. The Purchaser has had an opportunity to ask questions and receive answers from the Company regarding the terms and conditions of its purchase of the Subscribed Shares and regarding the business, financial affairs and other aspects of the Company, and it has further had the opportunity to obtain any information (to the extent the Company possesses or can acquire such information without unreasonable effort or expense) which it deems necessary to evaluate its investment or to verify the accuracy of information otherwise provided to it.

 

4.3          Restricted Securities. The Purchaser understands that the Subscribed Shares will be characterized as “restricted securities” under the Securities Act and that under such laws and applicable regulations, the Subscribed Shares may be resold without registration under the Securities Act only in certain limited circumstances, and that otherwise the Subscribed Shares must be held indefinitely. The Purchaser further represents that it is familiar with Rule 144 promulgated under the Securities Act, as presently in effect, and the conditions which must be met in order for Rule 144 to be available for resale of “restricted securities,” and understands the resale limitations imposed by the Securities Act.

 

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4.4          Authority. The Purchaser has all required power and authority to execute and deliver this Agreement and to perform its obligations hereunder. This Agreement has been duly and validly executed and delivered by The Purchaser and (assuming the due authorization, execution and delivery by the Company) constitutes the legal, valid and binding obligation of the Purchaser, enforceable against him in accordance with its terms.

 

4.5          Organization. The Purchaser is duly organized, validly existing and in good standing under the laws of the jurisdiction of its formation.

 

5.             Representations and Warranties of the Company. The Company represents and warrants as of the date hereof to the Purchaser as follows:

 

5.1          Authorization. The Company has all requisite corporate power and authority to execute and deliver this Agreement, sell the Subscribed Shares and otherwise perform its obligations hereunder. This Agreement has been duly and validly executed and delivered by the Company and (assuming the due authorization, execution and delivery by the Purchaser) this Agreement constitutes the legal, valid and binding obligation of the Company, enforceable against it in accordance with its terms.

 

5.2          Organization. The Company is a corporation duly organized, validly existing and in good standing under the laws of the State of Delaware.

 

6.             Miscellaneous.

 

6.1          Governing Law. This Agreement and all matters arising hereunder shall be governed by and construed under the laws of the State of Tennessee, without regard to its conflicts of law rules or provisions.

 

6.2          Severability. If any provision of this Agreement or the application of such provision to any person or circumstance shall be held by a court of competent jurisdiction to be invalid, illegal, or unenforceable under the applicable law of any jurisdiction, (i) the remainder of this Agreement or the application of such provisions to other persons or circumstances or in other jurisdictions shall not be affected thereby, (ii) such invalid, illegal, or unenforceable provision shall be deemed inoperative to the extent that it may conflict therewith and shall be deemed modified to conform with such law, and (iii) such invalid, illegal, or unenforceable provision shall not affect the validity or enforceability of any other provision of this Agreement.

 

6.3          Counterparts. This Agreement may be executed in one or more counterparts, each of which when so executed and delivered shall be deemed an original, and all of which when taken together shall constitute one and the same instrument. The execution of this Agreement may be by actual or facsimile signature.

 

6.4          Notwithstanding anything to the contrary herein, this Agreement, and all Shares received hereunder, may be Transferred by the Purchaser to the DOE or its designee without any notice to, or approval of Company upon the termination or expiration of Purchasers Prime Contract with the DOE; provided that any and all such transferees shall enter into a joinder agreement pursuant to which each such transferee will assume all the obligations hereunder as if such transferee were the Purchaser as a precondition to the effectiveness of such transfer.

 

[Reminder of Page Intentionally left Blank]

 

5

 

 

IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly executed, all as of the date first written above.

 

  COMPANY:
     
  908 DEVICES INC.
     
  By: /s/ Kevin Knopp
    Name:  Kevin Knopp
    Title: Chief Executive Officer and President

 

[Signature Page to Subscription Agreement]

 

 

 

  PURCHASER:
   
  UT-BATTELLE, LLC
     
  By: /s/ Michael J. Paulus
    Name:  Michael J. Paulus
    Title: Director, Technology Transfer

 

 

[Signature Page to Subscription Agreement]

 

 

 

 

PLA-1669

 

AMENDMENT 1

TO

LIMITED EXCLUSIVE COMMERCIAL FIELD OF USE PATENT

LICENSE AGREEMENT

 

Between

 

UT-BATTELLE, LLC

Operator of the Oak Ridge National Laboratory

Under its U.S. Department of Energy Contract No. DE-AC05-00OR22725

(hereinafter “UT-Battelle”)

 

AND

 

908 DEVICES, INC.

(hereinafter “Licensee”)

 

This Amendment 1, made effective on August 2, 2013 (“Effective Date”), is entered into by UT-Battelle and the Licensee, with both hereinafter referred to collectively as the “Parties.”

 

WITNESSETH:

 

WHEREAS, the Parties entered into Limited Exclusive Commercial Field of Use Patent License Agreement PLA-1669 having an effective date of June 13, 2012 (the “Agreement”), and WHEREAS, the Parties now desire to amend the Agreement to revise the field of use definition and clarify when the Agreement will expire,

 

NOW THEREFORE, the Parties agree to this Amendment 1 as follows: In Article 2, DEFINITIONS, re-write “Field of Use 3” as follows:

 

“Field of Use 3: “Industrial process monitoring, which includes but is not limited to the following industrial process: exploration, production, and management of hydrocarbon and water reservoirs, and the development or management of facilities for storing fluids, such as carbon dioxide and natural gas, in subsurface reservoirs; and”

 

Re-write Article 8.13 as follows:

 

“8.13        This Agreement will terminate automatically upon the termination (but not the expiration) of the PLA-1670-PFTT License and, notwithstanding the expiration of the PLA-1670-PFTT License, Licensee shall continue to pay to Licensor for the remaining term of this Agreement: (i) a Net Sales Royalty on sales of Licensed Products (as defined in this Agreement) at the rate provided in Exhibit B of the expired PLA-1670-PFTT License, (ii) a Combination Net Sales Royalty on sales of Combination Products (as defined in this Agreement) at the rate provided in Exhibit B of the expired PLA-1670-PFTT License, and (iii) a percentage of Sublicensing Revenue (as defined in this Agreement) at the rate provided in Exhibit B of the expired PLA-1670-PFTT License.”

 

1

 

 

IN WITNESS WHEREOF, the Parties hereto have caused this Amendment 1 to be duly executed in their respective names by their duly authorized representatives.

 

UT-BATTELLE, LLC    
By: /s/ Michael J. Paulus  
Name:   Michael J. Paulus    
Title: Director, Technology Transfer    
Date: 6 Aug 2013    
       
908 DEVICES, INC.    
     
By: /s/ Kevin J Knopp    
Name: Kevin J Knopp    
Title: President & CEO    
Date: 8/5/13    

 

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