REDACTED VERSION
EXHIBIT 10.11
TO
LIGHT SCIENCES ONCOLOGY, INC.'S
REGISTRATION STATEMENT ON FORM S-1
INITIALLY FILED
APRIL 21, 2006
REGISTRATION NO. 333-133474
"[ * ]" = omitted, confidential material, which material has been
separately filed with the Securities and Exchange Commission pursuant to a
request for confidential treatment.
EXCLUSIVE LICENSE AGREEMENT
EXCLUSIVE LICENSE AGREEMENT
DATED AS OF OCTOBER 5, 2005
BETWEEN
LIGHT SCIENCES CORPORATION
AND
LIGHT SCIENCES ONCOLOGY, INC.
EXCLUSIVE LICENSE AGREEMENT
THIS EXCLUSIVE LICENSE AGREEMENT (this "Agreement") is effective as of
October 5, 2005 (the "Effective Date") by and between Light Sciences
Corporation, a Washington corporation ("LSC"), and Light Sciences Oncology,
Inc., a Washington corporation ("LSO").
WHEREAS, LSC owns or controls certain technology and intellectual property
rights relating to the treatment, diagnosis and monitoring of cancer and may in
the future own or control additional technology and intellectual property
rights;
WHEREAS, LSO desires to enter an exclusive license with LSC to
commercialize such technology in the Field of Use (as defined below);
WHEREAS, concurrent with the execution of this Agreement, LSC and LSO shall
enter into a separate sublicense agreement with respect to the LSC Excluded
Technology (as defined below) and LSO shall not obtain any rights to the LSC
Excluded Technology pursuant to this Agreement;
WHEREAS, LSC has created certain subsidiaries and may create additional
subsidiaries, in its sole and complete discretion, which have licensed or will
license the LSC Licensed Technology (as defined below) from LSC in order to
pursue research and development efforts in separate fields of use other than the
Field of Use (such subsidiaries being referred to as the "Additional LSC Subs");
and
WHEREAS, LSO and the Additional LSC Subs desire to provide for the control
and sharing of costs related to the prosecution and maintenance of patents
included in the LSC Licensed Technology and the prosecution of any infringement
actions related thereto;
NOW, THEREFORE, in consideration of the covenants and obligations
hereinafter set forth, the parties hereto hereby agree as follows:
1. Definitions.
1.1. "Abandonment" shall have the meaning set forth in Section 5.3(a).
1.2. "Additional Licensees" shall mean each Additional LSC Sub and any
other Person who has obtained a license to the LSC Licensed Technology directly
from LSC for use outside the Field of Use and who has a right similar to that of
LSO to participate in the prosecution, maintenance and enforcement of the LSC
Licensed Technology. A Person shall not be deemed to be an Additional Licensee
with respect to particular LSC Licensed Technology if the Person (including an
Additional LSC Sub) does not have an exclusive license to the particular LSC
Licensed Technology or rights with respect to the prosecution, maintenance and
enforcement of the particular LSC Licensed Technology that are similar to LSO's
rights set forth in Section 5. For example, a Person who did not license a
particular patent (or subsequently had the patent removed from the definition of
"LSC Patents" that it was licensing) would not be an
"Additional Licensee" for purposes of the notices and other rights and
activities described in Section 5 for "Additional Licensees" with respect to the
patent.
1.3. "Additional LSC Subs" shall have the meaning set forth in the
Recitals.
1.4. "Additional LSC Sub License Agreement" shall have the meaning set
forth in Section 7.7.
1.5. "Affiliate" with respect to any Person shall mean entities that are
controlled by or are under common control of such Person; provided, however,
that the Additional LSC Subs, LSC and LSO shall be deemed not to be Affiliates
of each other or be deemed to be controlled by, controlling or under common
control with each other, for the purposes of this Agreement. For purposes of
this definition, "control" shall mean that a Person owns or controls fifty
percent (50%) or more of the voting securities of an entity or of an interest in
the assets, profits or earnings of an entity.
1.6. "Bankruptcy Code" shall have the meaning set forth in Section 8.2.
1.7. "Bona Fide Dispute" shall have the meaning set forth in Section 5.2.
1.8. "Confidential Information" shall have the meaning set forth in Section
6.1.
1.9. "Damages" shall mean any and all claims, suits, losses, damages,
costs, fees, and expenses, including reasonable attorney fees and litigation
costs.
1.10. "Dispute" shall have the meaning set forth in Section 11.3.
1.11. "Field of Use" shall mean the diagnosis, prophylaxis, treatment and
monitoring in humans or animals of tumors, malignant disease, cancers,
neoplasias, metaplasias, hyperplasias and dysplasias, including, but is not
limited to, tumors located anywhere in the body (e.g., brain, eye, ear, head &
neck, intra-oral, esophageal, intra-thoracic, lung, intra-abdominal, stomach,
ileum, pancreas, spleen, colon, kidney, gonads, uterus, rectum, extremities and
skin), carcinomas in situ, dysplastic tissue changes in organs and surfaces,
hyperplastic tissues in organs and surfaces and sarcomas. The Field of Use does
not include [ * ].
1.12. "Governmental Authority" means any U.S. Federal, state, foreign or
local government or any court, tribunal, administrative agency or commission or
other governmental or regulatory authority, body or agency, including any
self-regulatory organization.
1.13. "Infringement Parties in Interest" shall have the meaning set forth
in Section 5.4(a).
1.14. "License" shall have the meaning sent forth in Section 2.
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1.15. "Licensed Products" shall mean any products which would infringe the
claims of the LSC Patents, LSC Patent Applications or LSC Trademarks if there
were no license between LSC and LSO, or which involve the use of LSC Know-How.
1.16. "Liens" means any lien, pledge, mortgage, security interest, claim,
lease, charge, option, right of first refusal or first offer, transfer
restriction, voting requirement or any other encumbrance, restriction or
limitation, other than any the rights granted contemporaneously or subsequently
to the Additional LSC Subs or other Additional Licensees.
1.17. "LSC Event of Default" shall have the meaning set forth in Section
8.3(a).
1.18. "LSC Excluded Technology" shall mean any and all rights licensed to
LSC under the License and Supply Agreement dated as of April 28, 2000 by and
among Nippon Petrochemicals Co., Ltd., Meiji Seika Kaisha, Ltd, and LSC, as
amended from time to time.
1.19. "LSC Improvements" shall mean any new or useful invention, process or
improvement, patentable or unpatentable, relating to or arising from the LSC
Patents or LSC Patent Applications, as the case may be, conceived or first
reduced to practice or demonstrated to have utility by LSC during the Term.
1.20. "LSC Know-How" shall mean any invention, discovery, know-how, data,
formulae, information, composition, process, trade secret, equipment and other
subject matter relating to the LSC Licensed Technology that is (a) owned or
controlled by LSC during the Term and (b) necessary or useful for the research,
development, manufacture or commercialization of any Licensed Product in the
Field of Use. LSC Know-How does not include LSC Excluded Technology.
1.21. "LSC Licensed Technology" shall mean the LSC Patents, LSC Patent
Applications, LSC Know-How and LSC Trademarks; provided, however, in no case
shall the LSC Licensed Technology include any LSC Excluded Technology, which
shall be subject to a separate agreement.
1.22. "LSC Patents" shall mean the patents listed in Appendix A, as well as
foreign counterparts thereof, patents issuing from LSC Patent Applications,
patents that are in-licensed or controlled by LSC during the Term, and
reexaminations, reissues, patents of addition and extensions of the foregoing
(including, without limitation, any LSC Improvements relating to the foregoing).
LSC Patents do not include LSC Excluded Technology or patents that have been
removed from the definition pursuant to Section 5.2 or 5.3(c) due to the action
or inaction of LSO.
1.23. "LSC Patent Applications" shall mean (a) the patent applications
listed in Appendix B and (b) all patent applications that cover inventions or
discoveries that are made, developed, conceived, first reduced to practice,
in-licensed or controlled by LSC during the Term, as well as continuations,
divisionals, continuations-in-part, and foreign counterparts of each of the
foregoing subsections (a) and (b) (including, without limitation, any LSC
Improvements relating to the foregoing). LSC Patent Applications do not include
LSC Excluded
Technology or patent applications that have been removed from the definition
pursuant to Section 5.2 or 5.3(c) due to the action or inaction of LSO.
1.24. "LSC Trademarks" shall mean the trademarks and trademark applications
listed in Appendix C.
1.25. "LSO Patents" shall mean all patents and patent applications covering
inventions that arise from the License to the extent such inventions are made,
developed, conceived or first reduced to practice by LSO alone or jointly with
others during the Term (but only to the extent of LSO's rights in same),
including all divisionals, continuations, and continuations-in-part of such
patent applications as well as reexaminations, reissues, patents of addition,
extensions and any foreign counterparts thereof.
1.26. "LSO Technology" shall mean the LSO Patents and, to the extent not
covered by the LSO Patents, any inventions, discoveries, know-how, data,
formulae, information, compositions, processes, trade secrets, equipment and
other subject matter relating to or derived from the exercise of the License, to
the extent such inventions are conceived, discovered or made by LSO alone or
jointly with others (but only to the extent of LSO's rights in same) during the
Term.
1.27. "Net Sales" shall mean the aggregate amounts invoiced each year by
LSO and its Affiliates and sublicensees from sales of Licensed Products to
unrelated third parties (i.e., distributors, agents, wholesalers, customers or
reimbursement organizations, as the case may be), less the following deductions
related to the sales: (a) discounts, credits, rebates, allowances and
adjustments for rejections, recalls or returns; (b) retroactive price reductions
or rebates; (c) sales, excise, value-added and similar taxes or duties; (d)
transportation, insurance and other handling and packing expenses; (e)
management fees that are paid during the relevant time period to group
purchasing organizations; and (f) bad debts. For the sake of clarification,
amounts invoiced for transfers between or among LSO, Additional Licensees, LSC
and any of their Affiliates or sublicensees, and Licensed Products provided free
of charge as samples or provided for clinical trials, regulatory purposes or
compassionate use, shall not be included in the calculation of Net Sales.
1.28. "Person" shall mean a natural person, partnership (general or
limited), corporation, joint venture, business trust, limited liability company,
cooperative, association or other form of business organization, trust, estate
or any other entity, other than a Governmental Authority.
1.29. "Pro Rata Percentage" shall mean the percentage obtained by
multiplying [ * ] by the fraction with a numerator equal to [ * ] and a
denominator equal to [ * ]. The Pro Rata Percentage shall be recalculated
whenever an Additional LSC Sub or Additional Licensee is created [ * ] for
purposes of the calculation in the preceding sentence, which recalculated Pro
Rata Percentage shall be applied retroactively as described in Section 5.2. By
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way of example, if on the date hereof LSO, an Additional LSC Sub and two (2)
Additional Licensees exist, the Pro Rata Percentage shall be [ * ], and if an
additional Additional LSC Sub is created hereafter, the Pro Rata Percentage
shall become [ * ], assuming LSO and each Additional LSC Sub and Additional
Licensee counts as [ * ].
1.30. "Prosecution Costs" shall have the meaning set forth in Section 5.2.
1.31 "Right of First Refusal and Co-Sale Agreement" shall mean the Right of
First Refusal and Co-Sale Agreement dated October 6, 2005, by and among LSO, LSC
and each of the persons and entities identified as parties therein.
1.32. "Royalty Period" shall mean for each Licensed Product, on a
country-by-country basis, the later of (a) the last to expire of any patents
included in the LSC Patents (and termination of any LSC Patent Applications with
then-pending claims) in the country that would be infringed, but for this
Agreement, by the sale of the Licensed Product in the country or (b) ten (10)
years after first commercial sale to a third party (not an Affiliate or
sublicensee) of any Licensed Product in the country after approval to sell has
been received from the appropriate Governmental Authorities in the country.
1.33 "Term" shall have the meaning set forth in Section 8.1.
1.34 "Threshold Amount" shall mean [ * ].
2. License.
(a) LSC Licensed Technology. LSC hereby grants to LSO an exclusive
(even as to LSC), perpetual, worldwide license, with right to assign or
sublicense, to: (a) use the LSC Licensed Technology in the Field of Use; (b)
make and have made Licensed Products within the Field of Use; and (c) sell, have
sold, offer to sell, import, export or otherwise distribute Licensed Products
for use within the Field of Use (the "License"); provided, however, the duration
of the License may only be terminated if the conditions in Section 5.2, 8 or 9.2
occur.
(b) Reservation of Rights. LSC reserves for itself a nonexclusive,
nontransferable right to use the LSC Licensed Technology in the Field of Use
solely for noncommercial research and development purposes.
3. Consideration; Taxes.
3.1. Royalty. As consideration for the License granted by LSC to LSO under
Section 2, LSO shall pay a royalty to LSC in an amount equal to [ * ] of Net
Sales of Licensed Products during the Royalty Period. At the end of the Royalty
Period for each Licensed Product, no further royalties shall accrue and the
License shall become fully paid-up and royalty-free.
3.2. Reports and Payments. LSO shall provide written reports and payments
to LSC
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within [ * ] days after the close of each calendar quarter during the Term.
These reports shall show for such calendar quarter sales by LSO and any
sublicensees of Licensed Products, details of the quantities of each type of
Licensed Product sold in each country, Net Sales for each Licensed Product, the
form of revenue received and the royalties due LSC thereon. Concurrently with
the making of each such report, LSO shall make payment to LSC in U.S. dollars of
amounts payable for the period covered by such report. Where Net Sales is in a
currency other than U.S. dollars, conversion of Net Sales into U.S. dollars
shall be at the exchange rate prevailing at Citicorp N.A. on the last business
day of the quarter to which the payment pertains.
3.3. LSO Records. LSO shall keep clear, accurate and complete records, for
a period of at least three (3) years, for each reporting period in which sales
occur showing the sales or other disposition of Licensed Products in sufficient
detail to enable verification of amounts payable pursuant to Section 3.1.
Following reasonable notice, LSC shall have the right, at LSC's sole expense, to
have LSO's books and records examined during regular business hours, but not
more than once a year, by an independent accounting firm reasonably acceptable
to LSO, which firm is bound in confidence to disclose only evidence of
noncompliance by LSO with respect to the calculation of royalties due hereunder.
In the event LSO has underpaid LSC, LSO shall pay the amount of such
underpayment immediately and, to the extent such underpayment is more than [ * ]
for the audited period, shall reimburse LSC for the reasonable expense of the
audit. If LSO has overpaid LSC, such overpayment shall be immediately refunded
by LSC.
3.4. LSC Records. LSC shall keep clear, accurate and complete records, for
a period of at least three (3) years, for each reporting period which LSC has
submitted statements of account to LSO of costs and expenses which are
reimbursable under this Agreement, in sufficient detail to enable verification
of amounts payable. Following reasonable notice, LSO shall have the right, at
LSO's sole expense, to have LSC books and records examined during regular
business hours, but not more than once a year, by an independent accounting firm
reasonably acceptable to LSC, which firm is bound in confidence to disclose only
evidence of noncompliance of LSC with respect to the calculation of reimbursable
expenses. In the event LSC has overcharged LSO, LSO shall pay immediately the
amount of such overcharge that has been paid by LSO and, to the extent such
overcharge is more than [ * ] for the audited period, reimburse LSO for the
expense of the audit. If LSO has underpaid LSC, the amount of such underpayment
shall be immediately paid to LSC.
3.5. Confidentiality of Reports and Records. A party's information that is
set forth in (a) the reports required by Section 3.2 and (b) the records subject
to examination under Sections 3.3 and 3.4, shall be subject to Section 6 hereof
and maintained in confidence by the other party and its independent accounting
firm performing the audit and shall not be used for any purpose other than
verification of the performance of obligations hereunder and the enforcement
thereof.
3.6. Taxes. LSO is solely responsible for the payment of any taxes
(including withholding, sales or use taxes, intangible taxes and property taxes)
resulting from the payment
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of royalties to LSC hereunder, other than any taxes assessed by any jurisdiction
which are based on the income of LSC. LSO agrees to hold harmless LSC from all
claims and liability arising from LSO's failure to report or pay any such taxes.
3.7 Value of Know-How. LSO acknowledges that the LSC Know-How constitutes
valuable and substantial trade secrets and know-how of LSC. The parties
acknowledge and agree that, for their mutual convenience and after considering
other alternatives, the payments to LSC set forth in this Agreement, including
the structure and timing of royalty payments, are an appropriate and mutually
convenient way of compensating LSC.
4. Ownership of Intellectual Property; Use of LSC Trademarks/Names/Patent
Numbers.
4.1. LSO Technology. Any and all intellectual property created, generated
or developed by or on behalf of LSO during the Term from the exercise of the
License shall vest in and be owned by LSO and shall be considered to be part of
LSO Technology.
4.2. LSC Licensed Technology. Subject to the License, any and all
intellectual property created, generated or developed by or on behalf of LSC
during the Term shall vest in and be owned by LSC and, if necessary or useful in
the Field of Use, shall be included in the LSC Licensed Technology.
4.3. Joint Inventions. Any intellectual property arising or resulting from
the inventive work by one or more employees of LSC and LSO (and any other
Persons), as to which the employees would be inventors under the patent laws of
the United States, shall be jointly owned by the parties (each party having an
undivided interest therein), and all of LSC's rights and interests therein shall
be subject to the License. The laws of the United States with respect to joint
ownership of inventions shall be applied in all jurisdictions of the world to
the parties' joint ownership interests.
4.4. Use of LSC Trademarks. The License includes the exclusive right to use
the LSC Trademarks in advertising, labeling, promoting and selling Licensed
Products in the Field of Use. The nature and quality of all Licensed Products
sold by LSO under the LSC Trademarks shall be of a quality and nature comparable
to similar products sold by other reputable medical device, pharmaceutical or
biotechnology companies. To facilitate this quality control provision, LSO
shall, upon reasonable request, permit LSC to inspect at LSO's facility or its
manufacturer's facility any Licensed Products to be sold by LSO under the LSC
Trademarks. In addition, LSO shall, upon reasonable request, provide to LSC
samples of any advertising or promotional materials published by LSO that
display the LSC Trademarks. LSO shall use the LSC Trademarks with such trademark
designations as are reasonably necessary to protect the status of the LSC
Trademarks as trademarks.
4.5. Use of Name. Except as provided by this Agreement, neither party shall
use the trademark, indicia or name of the other party on any advertising,
promotional or labeling of Licensed Product without the written approval of the
other party, which approval shall not be unreasonably withheld, conditioned or
delayed.
4.6. Marking. LSO shall mark all Licensed Products with the applicable
patent and patent application number(s) in accordance with all applicable local,
state and federal rules and regulations.
5. Patent Maintenance and Enforcement.
5.1. Prosecution and Maintenance. Except upon Abandonment, LSC shall be
responsible for all filing, prosecution and maintenance of the LSC Patents and
LSC Patent Applications in every jurisdiction worldwide and shall be responsible
for determining strategy with respect thereto. LSC shall act in good faith and
in a commercially reasonable and diligent manner with respect to the filing,
prosecution and maintenance of the LSC Patents and LSC Patent Applications. LSC
shall give due respect to LSO's position with respect to the filing, prosecution
and maintenance of the LSC Patents and LSC Patent Applications and LSC may, in
its sole discretion, also give due respect to the Additional Licensees'
positions with respect thereto. LSC shall keep LSO promptly and fully informed
of the course of patent filings, prosecution and other proceedings, including
providing to LSO copies of substantive communications, search reports and third
party observations submitted to or received from patent offices, all of which
shall be provided to LSO in sufficient time for LSO to review and provide
comments to LSC prior to LSC taking any action or making any filing with any
patent offices. LSO shall have the right to review proposed filings, pending
applications, patents and other proceedings and make recommendations to LSC
concerning them and their conduct, which LSC shall consider in good faith and
take into account in its filing, prosecution and maintenance of the LSC Patents
and LSC Patent Applications. LSO shall be responsible for its own expenses in
providing such patent consultation to LSC. Any input provided by LSO to LSC with
respect to the filing, prosecution and maintenance of the LSC Patents and LSC
Patent Applications shall be deemed to be the Confidential Information of LSC.
5.2. Allocation of Expenses; Penalty for Nonpayment. LSO shall pay the Pro
Rata Percentage of the out-of-pocket costs and expenses (including attorneys'
fees) reasonably incurred by LSC after the Effective Date in filing, prosecuting
and maintaining the LSC Patents and LSC Patent Applications (the "Prosecution
Fees"); provided, however, that LSO may elect, upon [ * ] days prior written
notice to LSC and the Additional Licensees, not to be responsible for or pay the
Prosecution Fees thereafter accruing for particular patents or patent
applications in particular jurisdictions, in which case such patents or patent
applications shall be removed from the definition of "LSC Patents" or "LSC
Patent Applications" (and therefore not be included in the License,
notwithstanding any language in Section 2 to the contrary); provided further,
however, that any party who becomes an Additional Licensee (or has its Pro Rata
Percentage recalculated because it received at least the Threshold Amount) shall
be required to pay to LSC its Pro Rata Percentage of the Prosecution Fees
accruing after October 5, 2005, which amount shall be shared by LSC among LSC,
LSO and the Additional Licensees on the basis of the reduced amount of
Prosecution Fees for which they should have been responsible as a result of such
Additional Licensee. LSC shall invoice LSO on a monthly basis for its portion of
the Prosecution Fees each month and such invoice shall itemize the Prosecution
Fees by
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patent and patent application number. The Prosecution Fees shall be due and
payable within [ * ] days of the date of invoice. If such invoice is past due,
other than by reason of a bona fide dispute between LSO and LSC with respect to
the amount of invoices (a "Bona Fide Dispute"), for more than [ * ] days after
the date of the invoice or [ * ] days after LSC's notice to LSO of such past due
invoice, whichever is later, [ * ]. In addition, any amounts outstanding more
than [ * ] days after the date of the invoice will be subject to a late fee at
an annual rate equal to the "prime rate" as quoted by The Wall Street Journal
(Western Edition) (or if not published, another appropriate publication) for the
first business day of each month [ * ], whichever is less, from the date due
until the date paid, unless the Bona Fide Dispute shall be determined in favor
of LSO. In addition, in the event LSO is more than [ * ] months past due in any
amount (which is not subject to a Bona Fide Dispute) and LSO has been given at
least [ * ] days prior written notice by LSC, the patents or patent applications
to which the past due amount pertains shall be removed from the definition of
LSC Patents or LSC Patent Applications (and therefore not be included in the
License, notwithstanding any language in Section 2 to the contrary).
5.3. Abandonment by LSC.
(a) Notice. In the event LSC decides not to file or continue the
prosecution or maintenance of a particular patent or patent application included
in the definition of the LSC Patents and LSC Patent Applications in a particular
jurisdiction or every jurisdiction (an "Abandonment"), LSC shall promptly
provide notice (which notice shall include the basis for such action in
reasonable detail) to LSO (and to any Additional Licensees) at least [ * ] days
prior to the date which any filing or payment is required to be made in order to
preserve the rights to such patent or patent applications.
(b) Election by LSO. LSO shall notify LSC and all Additional Licensees
within [ * ] days of receiving LSC's Abandonment notice pursuant to Section
5.3(a) whether LSO desires to pursue the filing, prosecution or maintenance of
the patents or patent applications subject to Abandonment. If LSO gives such
notice that it desires to pursue such filing, prosecution or maintenance, LSO
shall assume and be assigned and allowed to exercise all of LSC's rights and
obligations under Sections 5.1 and 5.2 in pursuing the patents or patent
applications subject to Abandonment, including filing, prosecution and
maintenance in the name of LSC with reimbursement of Prosecution Fees as set
forth in Section 5.2. In the event LSO does not give such notice or notifies LSC
and the Additional Licensees that it is not interested in pursuing such patents
or patent applications, any Additional Licensee who has given notice of its
desire to pursue such patents or patent applications within [ * ] days of LSC's
notice of Abandonment pursuant to Section 5.3(a) shall be entitled to assume and
be assigned and allowed to exercise all of LSC's rights and obligations under
Sections 5.1 and 5.2 with respect to such Abandonment; if more than one
Additional Licensee has given such notice, LSC shall promptly designate one of
the Additional Licensees to have such rights and obligations based on LSC's
judgment of the Additional Licensee to whom such patent or patent application
has the greatest value in its licensed field of use.
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(c) Assignment to LSO or an Additional Licensee. If LSO has given
notice of its desire to pursue the patents or patent applications pursuant to
Section 5.3(b) and no Additional Licensees have given notice to LSO, LSC and the
other Additional Licensees within [ * ] days of receiving LSC's Abandonment
notice pursuant to Section 5.3(a) of its desire, to pursue the patents or patent
applications, LSO may elect to assume all future responsibility with respect to
the patents or patent applications subject to Abandonment (including
responsibility for all future accruing fees and expenses related thereto) and be
assigned such patents or patent applications, in which event such patents or
patent applications shall be removed from the definition of "LSC Patents" or
"LSC Patent Applications" (and not be royalty bearing) and LSC shall cause such
patents or patent applications to be removed from the licenses granted by LSC to
the Additional Licensees. If LSO has not given notice of its desire to pursue
the patents or patent applications and only one Additional Licensees has so
given notice of its desire to pursue the patents or patent applications, such
Additional Licensee may elect to assume all future responsibility with respect
to the patents or patent applications subject to Abandonment (including
responsibility for all future accruing fees and expenses related thereto) and be
assigned such patents or patent applications, in which event such patents or
patent applications shall be removed from the definition of "LSC Patents" or
"LSC Patent Applications" and LSC shall cause such patents or patent
applications to be removed from the licenses granted by LSC to all other
Additional Licensees.
(d) Cooperation. In the event LSO undertakes responsibility with
respect to any filing, prosecution or maintenance of abandoned patents or patent
applications, LSC shall cooperate with and assist LSO with the filing,
prosecution or maintenance and provide LSO with all files, correspondence and
other records in its possession related to the filing, prosecution or
maintenance thereof; provided, however, that LSO shall reimburse LSC for all
reasonable expenses incurred by LSC in providing such cooperation and LSC shall
cause all other Additional Licensees to reimburse LSO for their Pro Rata
Percentage of such reimbursement.
(e) Abandonment by LSO. In the event that LSO decides not to file or
continue the prosecution or maintenance of any such patent or patent application
after initially making such election, LSO shall promptly notify LSC (and any
Additional Licensee) at least [ * ] days prior to the date which any filing or
payment is required to be made in order to preserve the rights to such patent or
patent applications; provided, however, if LSO has received less than [ * ] days
prior notice, LSO shall provide notice to LSC as soon as practicable.
5.4. Infringement of Patents by a Third Party.
(a) Notice. In the event that any infringement of a LSC Patent by a
third party shall come to the attention of LSO or LSC, then such party shall
promptly notify the other party and each Additional Licensee of the nature and
evidence of such infringement and whether such infringement appears to have
occurred in any fields to which the LSC Patent has been licensed to LSO or any
Additional Licensee. LSC shall notify LSO and each Additional Licensee within [
* ] days of giving or receiving such infringement notice (including an
infringement notice
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from an Additional Licensee that has been given in accordance with this Section
5.4(a)) whether or not it intends to bring a patent infringement action against
the third party and the licensed field (i.e., LSO's and/or any Additional
Licensees') in which such infringement appears to have occurred (LSO and/or any
Additional Licensees in whose licensed field the infringement has occurred and
who are identified by LSC or who have given notice to the other Additional
Licensees, LSO and LSC of such infringement in their licensed fields not later
than [ * ] days after the date that LSC's notice is due is hereafter referred to
as the "Infringement Parties in Interest").
(b) LSC Action. If LSC gives such notice of its intention to bring
such an infringement action, LSC shall bring such action within the next [ * ]
shall diligently pursue such action and shall be entitled to employ counsel and
control the course of litigation at its expense; provided, however, that LSO
shall be entitled to participate, at its expense, in the action. Any recovery by
LSC in such infringement action shall be used to [ * ] in connection with such
action (such reimbursement to be pro rata on the basis of such costs and fees).
Any remaining amount from the recovery shall be divided as follows: [ * ] as
reasonably determined and allocated by LSC.
(c) Licensee Action. If LSC gives notice of its intention not to bring
such an infringement action or fails to give notice as required in Section
5.4(a), the Infringement Parties in Interest may elect to have all future
responsibility with respect to bringing such infringement action, (and be
responsible for all fees and expenses related thereto [ * ]; provided, however,
if LSO and at least one Additional Licensee are electing Infringement Parties in
Interest, LSO shall negotiate in good faith a joint agreement among the electing
Infringement Parties in Interest with respect to such infringement action and
the sharing of expenses and monetary awards relating thereto. Such joint
agreement shall be submitted to review by LSC, which shall have [ * ] from the
receipt thereof to accept or reject such agreement. If LSC rejects such
agreement, LSC shall proceed with such infringement action as provided in
Section 5.4(b). Failure of LSC to reject such agreement within the [ * ] period
shall be deemed an acceptance thereof by LSC.
(d) Dispute Regarding Action. If the electing Infringement Parties in
Interest are not able to mutually agree on bringing the infringement action
[ * ] (or by such later time that they mutually agree upon), then they shall not
be entitled to bring such infringement action; provided, however, if any
Infringement Party in Interest requests, the decision of which one (and it shall
only be one) of such parties should be entitled to bring and control the
infringement action and the allocation of costs and any recoveries shall be
submitted expeditiously to an arbitrator selected unanimously by such parties
(or failing unanimity, an arbitrator with life sciences patent experience
selected by the Regional Vice President of the American Arbitration Associate in
Seattle (or his or her designee)). The decision of such arbitrator shall be
binding on the parties and such arbitration shall be conducted in Seattle,
Washington. The parties shall abide by and perform in accordance with any
decision made by
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the arbitrator. Any judgment confirming such decision may be entered in any
court of competent jurisdiction. The expenses of any such arbitration shall be
shared equally by the Infringement Parties in Interest electing to participate
in the infringement action.
(e) Cooperation of LSC. In the event LSO undertakes sole or joint
responsibility with respect to such patent infringement action, LSC shall
cooperate with and assist LSO (and any Additional Licensees, as applicable) and
execute all necessary and proper documents and take such actions as shall be
appropriate in connection with such infringement action, including joining such
action as a party (or allowing the action to be instituted in its name). In the
event that LSO decides not to continue such infringement action after initially
making such election, LSO shall promptly notify LSC and the other Infringement
Parties in Interest who had elected to jointly participate.
(f) Cooperation of LSO. LSO shall cooperate with and assist LSC or
Infringement Parties in Interest with regard to any such infringement action and
execute all necessary and proper documents and take such actions as shall be
appropriate in connection with such infringement action.
5.5. LSO Election. Notwithstanding the foregoing, LSO shall be
entitled to assume full responsibility for filing and all prosecution,
maintenance and enforcement (including bringing any infringement action and
retaining any recoveries therefrom) of any particular LSC Patent Application or
LSC Patent in the name of LSC and shall bear all costs related thereto, provided
that LSO (a) notifies LSC and obtain LSC's written consent to such assumption
and (b) notifies each Additional Licensee known to LSO in writing and no
Additional Licensee objects to such assumption within [ * ] days of receipt of
such notice. If any Additional Licensee objects to such assumption, LSO shall
discuss in good faith such objections in an attempt to reach a mutually
acceptable agreement with any objecting Additional Licensees.
5.6. Misappropriation of Trade Secret; Infringement of Trademark. In
the event there has been a misappropriation of a trade secret or infringement of
a trademark included in the LSC Licensed Technology, an action for
misappropriation of the trade secret or infringement of the trademark shall be
handled in the same way as, and the parties shall proceed and have the same
rights as, set forth in Section 5.4 with respect to infringement of a LSC
Patent, and notices and other rights described in Section 5.4 shall be given to
those Additional Licensees who have exclusive license rights to the trade secret
or trademark and rights with respect to enforcement that are similar to LSO's
rights.
5.7 LSO Election in the Event of LSC Change of Control. In the event
of a LSC Change of Control with any person or entity other than an Industry
Operating Company occurring prior to an initial public offering of LSC
securities to the general public, LSO shall be entitled upon written notice
given to LSC and the Additional Licensees within [ * ] days after the closing of
such LSC Change of Control (the "Exercise Notice") to assume and exercise
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any or all of LSC's rights and responsibilities under this Agreement with
respect to the filing, prosecution, maintenance or enforcement of any of the LSC
Licensed Technology under this Section 5 (unless the exercise of the right to
give the Exercise Notice is waived in writing by holders of a majority of the
Series A Preferred Stock of LSO). The assumption of rights under this Section
5.7 shall become effective immediately upon receipt of the Exercise Notice by
LSC, and LSC shall promptly cooperate with LSO in all respects necessary to give
effect to the Exercise Notice in accordance with this Agreement. After such a
LSC Change of Control and prior to the delivery of the Exercise Notice, if same
shall occur, LSC shall take all necessary action to maintain the status quo of
the LSC Licensed Technology and shall not, by action or inaction, permit any
patent rights in the LSC Licensed Technology to become abandoned or adversely
affected in any respect. However, any such election shall not modify the
financial arrangements or obligations of the parties under this Agreement or
under any Additional LSC Sub License Agreement (e.g., each party and each
Additional Licensee shall continue to be obligated financially to the same
extent as if LSO had not assumed LSC's rights and responsibilities pursuant to
this Section 5.7). If LSO does not elect to assume any such rights or
responsibilities within such [ * ]-day period, then the Additional Licensees
shall have the right to elect to assume and exercise such rights and
responsibilities of LSC in the order of preference agreed upon by LSC and the
Additional Licensees by giving written notice to LSC and LSO. If the Additional
Licensees elect to assume and exercise such rights and responsibilities, the
financial arrangements or obligations of the parties under this Agreement or any
Additional LSC Sublicense Agreement shall remain unchanged. The failure of LSO
to exercise its right to assume and exercise any or all of LSC's rights and
responsibilities for the filing, prosecution, maintenance or enforcement of any
LSC Licensed Technology under this Section 5.7 shall not affect the License or
any of LSO's other rights under this Agreement. LSO shall not be entitled to
give an Exercise Notice with respect to any LSC Change of Control occurring
after the first such LSC Change of Control following the date of this Agreement.
Capitalized terms used in this Section 5.7 and not defined in this Agreement
shall have the meaning set forth in the Right of First Refusal and Co-Sale
Agreement.
5.8 Patent Term Extension. The parties shall cooperate in seeking any
available extensions of the terms of the patents included in the LSC Patents,
including (a) advising each other in a timely manner of any action by a
Governmental Authority that is pertinent to any extension, (b) reasonably
supplying each other with all information in its control pertaining to the
extension of the terms of such patents and (c) cooperating with each other to
execute all supporting affidavits or documents required in connection with the
extension of such patents. In connection with LSO receiving governmental
approvals to sell a Licensed Product and at the request of LSO, LSC shall seek,
in accordance with and to the extent permitted by applicable law, extensions of
the terms of such patents designated by LSO that are related to the Licensed
Product.
6. Confidentiality.
6.1. Confidential Information. Subject to Section 6.2, "Confidential
Information"
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shall mean (a) any proprietary or confidential information or material in
tangible form disclosed hereunder that is designated as "Confidential" at the
time it is delivered to the receiving party or (b) proprietary or confidential
information disclosed orally hereunder which is identified as confidential or
proprietary when disclosed and such disclosure of confidential information is
confirmed in writing within [ * ] days by the disclosing party. Any LSC Know-How
included in any assets or associated with any assets (including, without
limitation, contracts, INDs, drug master files and clinical and regulatory
records) assigned by LSC to LSO shall be deemed to be the Confidential
Information of LSO, except to the extent it becomes a matter of public knowledge
without fault on the part of LSC. Each party shall exercise due care (i.e., at
least as much care as it affords its own confidential information) to prevent
unauthorized disclosure or use of Confidential Information. The obligations of
confidentiality and nonuse shall exist for the Term and a period of [ * ] years
thereafter.
6.2. Exclusions. Confidential Information shall not include information
that the receiving party can establish, through documentary evidence, to:
(a) have been known by the receiving party prior to communication by
the disclosing party;
(b) have been a matter of public knowledge at the time of such
disclosure by the disclosing party;
(c) have become a matter of public knowledge, without fault on the
part of the receiving party, subsequent to disclosure by the disclosing party to
the receiving party; or
(d) have been disclosed to the receiving party from a third party
lawfully having possession of such Confidential Information without an
obligation of confidentiality to the disclosing party.
6.3. Permitted Uses/Disclosures. Notwithstanding the provisions of Section
6.1 above, the receiving party may use or disclose Confidential Information of
the disclosing party in connection with the exercise of its rights hereunder
(including commercialization and sublicensing) or the fulfillment of its
obligations and duties hereunder and in prosecuting or defending litigation,
complying with applicable U.S. and international governmental regulations
(including, without limitation, regulations of the Securities and Exchange
Commission and the U.S. Food and Drug Administration) and submitting information
to tax or other U.S. and international governmental authorities; provided,
however, if the receiving party is required by law to make any public
disclosures of Confidential Information of the disclosing party, to the extent
it may legally do so, it shall give reasonable advance notice to the disclosing
party of such disclosure to enable the disclosing party to interpose an
objection to such a requirement and shall use its reasonable efforts to secure
confidential treatment of the Confidential Information prior to its disclosure
(whether through protective orders or otherwise).
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6.4. Confidentiality of this Agreement. The terms of this Agreement shall
be deemed to be Confidential Information of both parties and subject to the
provisions of this Section 6, except that either party may disclose the terms of
this Agreement to actual or prospective corporate partners and actual or
prospective investors and other professional advisors without the prior consent
of the other party under appropriate confidentiality provisions.
7. Representations and Warranties, Disclaimer of Liability; Indemnification;
Covenants.
7.1. Representations and Warranties by LSC. LSC represents and warrants to
LSO that:
(a) it is a corporation duly organized and validly existing under the
laws of the State of Washington and has the requisite power and authority to
execute and deliver this Agreement and to consummate the transactions
contemplated hereby, including the right to grant the rights and licenses
granted herein;
(b) no consent, approval or authorization of, or declaration or filing
with, any Governmental Authority or Person is required on the part of LSC in
connection with its execution, delivery and performance of this Agreement or the
consummation of the transactions contemplated hereby;
(c) the execution and delivery of this Agreement and the performance
and consummation of the transactions contemplated hereby have been duly
authorized by all necessary action on the part of LSC, and this Agreement has
been duly executed and delivered by LSC and, subject to the due authorization,
execution and delivery by LSO, constitutes a valid and binding obligation of
LSC, enforceable against LSC in accordance with its terms, except as may be
limited (i) by applicable bankruptcy, insolvency, reorganization or other laws
of general application relating to or affecting the enforcement of creditors'
rights generally; and (ii) by the effect of rules of law governing the
availability of equitable remedies;
(d) the execution and delivery of this Agreement does not, and the
consummation of the transactions contemplated hereby will not (i) conflict with,
or result in any violation or breach of any provision of the Articles of
Incorporation, by-laws or organizational documents of LSC, (ii) conflict with or
violate any applicable Federal or state statutes, judgments, decrees, laws,
ordinances, rules, regulations, injunctions and orders applicable to LSC or any
of its assets or operations or (iii) result in any violation or breach of,
constitute a default under or conflict with the provisions of any agreement to
which LSC is a party or by which it or any of its properties or assets is
otherwise bound;
(e) it has good title to all LSC Licensed Technology, free and clear
of all Liens and is not in default (or, with the giving of notice or lapse of
time or both, would be in default) under any contract or other agreement to use
any of the LSC Licensed Technology;
(f) it has not previously granted and will not grant any rights or
licenses with respect to the LSC Licensed Technology in the Field of Use or in
conflict with the rights and licenses granted herein;
(g) to the knowledge of LSC, none of the LSC Licensed Technology
infringes or conflicts with, and LSC has not received any notice of infringement
of, or conflict with, any license, patent, copyright, trademark, service mark or
other intellectual property right of any other Person and, to the knowledge of
LSC, there is no infringement or unauthorized use by any Person of any of the
LSC Licensed Technology;
(h) the validity or enforceability of any of the LSC Licensed
Technology or the title of LSC thereto has not been questioned in any
litigation, governmental inquiry or proceeding to which LSC is a party and, to
the knowledge of LSC, no such litigation, governmental inquiry or proceeding is
threatened;
(i) as of the Effective Date, except for the LSC Patents, the LSC
Patent Applications and the LSC Excluded Technology, LSC does not control any
patent or patent application claiming or disclosing inventions relating to or
useful in the Field of Use;
(j) as of the Effective Date, the patents and patent applications set
forth in Appendices A and B constitute all of the LSC Patents and LSC Patent
Applications, are owned by LSC and to LSC's knowledge, are not subject to an
ownership interest or a claim of an ownership interest therein by a third party;
(k) to LSC's knowledge as of the Effective Date, the practice and use
of the LSC Licensed Technology within the Field of Use will not infringe any
intellectual property right of a third party;
(l) LSC has taken all reasonable actions necessary or appropriate to
preserve the confidentiality of all trade secrets and proprietary or
confidential information or material related to the LSC Licensed Technology; and
(m) as of the Effective Date, the Additional LSC Subs are [NONE] and
there are no other Additional Licensees.
7.2. Indemnification of LSC. Other than as provided in Section 7.3, in no
event shall LSC be liable for any use by LSO of the LSC Licensed Technology or
any loss, claim, damage or liability of any kind or nature, which may arise from
or in connection with acts by LSO under this Agreement or the use of the LSC
Licensed Technology by LSO. LSO shall indemnify, defend and hold harmless LSC,
including its directors, officers, employees, and agents, against any and all
Damages resulting from or arising out of (a) the breach of any representation or
warranty made by LSO in this Agreement, (b) any breach or violation of, or
failure to properly perform, any covenant or agreement made by LSO in this
Agreement or (c) the possession, manufacture, use, sale or other disposition of
Licensed Products by LSO or its sublicensees, whether based on breach of
warranty, negligence, product liability or otherwise, except to the extent such
Damages result from a breach by LSC of any representation, warranty, covenant or
agreement of LSC or the gross negligence or willful misconduct of LSC.
7.3. Indemnification of LSO. LSC agrees to indemnify, defend and hold LSO
and its respective directors, officers, employees and agents harmless from and
against any and all Damages resulting from or arising out of (a) the breach of
any representation or warranty made
by LSC in this Agreement or (b) any breach or violation of, or failure to
properly perform, any covenant or agreement made by LSC in this Agreement,
except to the extent such Damages result from the gross negligence or willful
misconduct of LSO.
7.4. DISCLAIMER OF LIABILITY. NOTWITHSTANDING ANYTHING ELSE IN THIS
AGREEMENT OR OTHERWISE, NEITHER LSC, THE ADDITIONAL LSC SUBS NOR LSO WILL BE
LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT,
NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR ANY
INCIDENTAL OR CONSEQUENTIAL DAMAGES OR LOST PROFITS.
7.5. DISCLAIMER OF WARRANTIES. EXCEPT AS SPECIFICALLY PROVIDED IN THIS
AGREEMENT, NEITHER LSO NOR LSC MAKES ANY WARRANTIES OF ANY KIND, WHETHER EXPRESS
OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
7.6. ESSENTIAL TERMS. THE PARTIES ACKNOWLEDGE AND AGREE THAT THE PROVISIONS
UNDER THIS AGREEMENT THAT LIMIT LIABILITY, DISCLAIM WARRANTIES, OR EXCLUDE
CONSEQUENTIAL DAMAGES OR OTHER DAMAGES OR REMEDIES ARE ESSENTIAL TERMS OF THIS
AGREEMENT THAT ARE FUNDAMENTAL TO THE PARTIES' UNDERSTANDING REGARDING
ALLOCATION OF RISK. ACCORDINGLY, SUCH PROVISIONS SHALL BE SEVERABLE AND
INDEPENDENT OF ANY OTHER PROVISIONS AND SHALL BE ENFORCED AS SUCH, REGARDLESS OF
ANY BREACH OR OTHER OCCURRENCE HEREUNDER. WITHOUT LIMITING THE GENERALITY OF THE
FOREGOING, ALL LIMITATIONS OF LIABILITY, DISCLAIMERS OF WARRANTIES, AND
EXCLUSIONS OF CONSEQUENTIAL DAMAGES OR OTHER DAMAGES OR REMEDIES SHALL REMAIN
FULLY VALID, EFFECTIVE AND ENFORCEABLE IN ACCORDANCE WITH THEIR RESPECTIVE
TERMS, EVEN UNDER CIRCUMSTANCES THAT CAUSE ANY EXCLUSIVE REMEDY UNDER THIS
AGREEMENT TO FAIL OF ITS ESSENTIAL PURPOSE.
7.7. Licenses With Additional LSC Subs. LSC represents and warrants that
(a) the license agreement entered into, and to be entered into, by LSC and each
Additional LSC Sub (the "Additional LSC Sub License Agreements") is and shall be
in a form substantially identical to this Agreement (other than changes to the
name of each Additional LSC Sub and the applicable field of use) and (b) no
Additional Licensee (including all Additional LSC Subs) has been granted or
shall be granted any rights with respect to LSC Licensed Technology that are
more beneficial, taken as a whole (without regard to field of use), to such
licensee in comparison to the rights of LSO hereunder, unless LSO is granted, in
writing, identical beneficial rights (and related obligations) at the same time
of such other grant, which it may accept or reject with respect to its Field of
Use or, in the case of a nonexclusive grant, with respect to the field of use of
the grant and/or its Field of Use; provided, however, that (i) if a subsequent
Additional Licensee has not received (and is not expected to receive shortly
thereafter) at least the Threshold Amount at the time it enters into its license
agreement for the LSC Licensed Technology, then the language of Section 1.29
hereof shall be amended to provide that the
Additional Licensee counts as [ * ] in the numerator and denominator until it
has received at least the Threshold Amount, at which time there will be a
recalculation of the Pro Rata Percentage and a retroactive adjustment; (ii)
Section 5.3(b) and Section 5.3(c) of any license agreement for the LSC Licensed
Technology between LSC and a subsequent Additional Licensee shall be adjusted to
reflect that Light Sciences Oncology, Inc. has the first right to assume LSC's
rights and obligations, or take an assignment, with respect to an Abandonment
and that the rights of any subsequent Additional Licensee will be subordinate
thereto; and (iii) Section 5.7 of any license agreement for the LSC Licensed
Technology between LSC and a subsequent Additional Licensee shall be adjusted to
reflect that LSO has the first right, but not the obligation, to assume all of
LSC's rights and responsibilities with respect to the filing, prosecution,
maintenance and enforcement of the LSC Licensed Technology under Section 5 of
this Agreement in the event of a change of control of LSC as described in
Section 5.7 of this Agreement.
7.8. Identification of Additional Licensees. LSC shall promptly notify LSO
of the name and address of each Additional Licensee (including each Additional
LSC Sub) and its field of use and the scope of its rights and obligations in
comparison to this Agreement.
8. Term and Termination of Agreement; Dissolution of LSO; Event of Default.
8.1. Term. This Agreement will commence on the Effective Date and, unless
earlier terminated in accordance with this Section 8, will remain in full force
and effect until the last to expire of any Royalty Periods, i.e., when LSO no
longer has an obligation to pay royalties under this Agreement (the "Term").
Notwithstanding the expiration of the Term, the License shall survive, subject
to Section 8.2, as a fully paid-up, royalty-free license.
8.2. Insolvency. In the event of (a) the voluntary or involuntary
proceedings by or against LSO are instituted in bankruptcy under any insolvency
law, or a receiver or custodian is appointed for LSO, or proceedings are
instituted by or against LSO for corporate reorganization or the dissolution or
liquidation of LSO under Title 11 of the United States Code (the "Bankruptcy
Code"), which proceedings, if involuntary, shall not have been dismissed within
ninety (90) days after the date of filing, or if LSO makes an assignment for the
benefit of creditors, or substantially all of the assets of LSO are seized or
attached and not released within ninety (90) days thereafter, or LSO has
rejected this Agreement (or any license grant contained herein) under Section
365(n) of the Bankruptcy Code, or (b) the voluntary liquidation, dissolution,
winding up or cessation of business by LSO, then in such case and at such time
this Agreement shall terminate and, notwithstanding the language in Section 2
regarding the perpetual nature of the License, the License shall terminate.
8.3. LSC Default.
(a) Event of Default. The following events shall be defined as an "LSC
Event of Default": (i) breach of this Agreement by LSC which remains uncured (if
curable) for thirty
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(30) days following notice of such breach by LSO, (ii) voluntary or involuntary
proceedings by or against LSC are instituted in bankruptcy under any insolvency
law, or a receiver or custodian is appointed for LSC, or proceedings are
instituted by or against LSC for corporate reorganization or the dissolution or
liquidation of LSC under the Bankruptcy Code, which proceedings, if involuntary,
shall not have been dismissed within ninety (90) days after the date of filing,
or if LSC makes an assignment for the benefit of creditors, or substantially all
of the assets of LSC are seized or attached and not released within ninety (90)
days thereafter, or LSC has rejected this Agreement (or any license grant
contained herein) under Section 365(n) of the Bankruptcy Code, (iii) the
voluntary liquidation, dissolution, winding up or cessation of business by LSC
or (iv) the occurrence of an event of default under the terms of any Additional
LSC Sub License Agreement or any other license agreement between LSC and any
Additional Licensee giving rise to rights upon such event of default
substantially similar to the rights of LSO under Section 8.3(b) hereof.
(b) Patent Prosecution and Maintenance. In the event of an LSC Event
of Default and notwithstanding Section 5 hereof (i) LSC shall immediately notify
LSO and each Additional Licensee and (ii) LSO and any Additional Licensees shall
have the right to jointly agree with respect to all future prosecution and
maintenance of the LSC Patents and LSC Patent Applications. In the event LSO and
any Additional Licensees do not jointly agree with respect to all future
prosecution and maintenance of particular LSC Patents and LSC Patent
Applications, any prosecution or enforcement thereof shall be in accordance with
Section 5.
(c) Assignment of Patent and Patent Applications. In addition, in the
event of an LSC Event of Default, LSO and any Additional Licensees shall have
the right to jointly designate a party to whom LSC shall be obligated to assign
all of its right, title and interest in each LSC Patent and LSC Patent
Application (and all files, correspondence and other records related thereto)
and such party shall take such LSC Patent or LSC Patent Application and related
material subject to whatever agreement LSO and the Additional Licensees thereof
shall agree upon.
(d) Irrevocable License. In addition, in the event of an LSC Event of
Default, the License granted in Section 2 shall become irrevocable, fully
paid-up and non-royalty bearing.
(e) 365(n). All rights and licenses granted under or pursuant to this
Agreement by LSC to LSO are, and shall otherwise be deemed to be, for purposes
of Section 365(n) of the Bankruptcy Code, licenses of rights to "intellectual
property" as defined under Section 101(35A) of the Bankruptcy Code. LSO, as a
licensee of such rights under this Agreement, shall retain and may fully
exercise all of its rights and elections under the Bankruptcy Code. In the event
of the commencement of a bankruptcy proceeding by or against LSC under the
Bankruptcy Code that is not dismissed within ninety (90) days after it is filed,
LSO shall be entitled to a complete duplicate of (or complete access to, as
appropriate) any such intellectual property and all embodiments of such
intellectual property, and the same, if not already in its possession, shall be
promptly delivered to LSO (i) upon any such commencement of a bankruptcy
proceeding upon written request therefor by LSO, unless LSC elects to continue
to perform all of its obligations under this Agreement or (ii) if not delivered
under (i) above, upon the rejection of this Agreement by or on behalf of LSC,
upon written request therefor by LSO.
8.4. Voluntary Termination and Revocation. LSO shall have the right to
terminate this Agreement (including the License) or any portion of the License,
notwithstanding any language in Section 2 to the contrary, upon sixty (60) days
prior written notice to LSC. This Agreement shall terminate if LSC revokes the
License pursuant to Section 9.2(ii).
8.5. Effect of Termination.
(a) Accrued Rights and Obligations. Termination of this Agreement for
any reason shall not release either party hereto from any liability which, at
the time of such termination, has already accrued to the other party or which is
attributable to a period prior to such termination, nor preclude either party
from pursuing any rights and remedies it may have hereunder or at law or in
equity with respect to any breach of this Agreement. It is understood and agreed
that monetary damages may not be a sufficient remedy for any breach of this
Agreement and that the non-breaching party may be entitled to injunctive relief
as a remedy for any breach. Such remedy shall not be deemed to be the exclusive
remedy for breach of this Agreement, but shall be in addition to all other
remedies available at law or in equity.
(b) Return of Confidential Information. Upon termination of this
Agreement pursuant to Section 8.2 or 8.4, each party shall promptly return to
the other party all Confidential Information of the other party.
(c) Sublicenses. In the event this Agreement is terminated pursuant to
Section 8.2, any sublicensee of LSO who is not then in material breach shall
have its sublicense converted to a direct license from LSC under the terms and
conditions of this Agreement, as further limited and restricted by the terms of
the original sublicense as then in effect.
8.6. Survival. Subject to the provisions of this Section 8, Sections 1, 2,
4, 6, 7 (other than 7.1), 8 and 11 shall survive the expiration or termination
of this Agreement for any reason.
9. Diligence.
9.1. Efforts. LSO agrees to use reasonable commercial efforts to develop
and commercialize Licensed Products, to develop relationships with commercial
partners with respect to the Licensed Products, and to obtain such approvals as
may be necessary to make, have made, use, sell, offer to sell or otherwise
distribute the Licensed Products in the Field of Use.
9.2. Activities. If LSO has not, within five (5) years of the Effective
Date of this Agreement (a) initiated commercialization of a Licensed Product,
(b) entered into a relationship with a commercial partner regarding a Licensed
Product or (c) demonstrated the commercial potential of a Licensed Product
(e.g., through diligent performance of a clinical trial), then at LSC's sole
discretion, LSC may (i) convert the License granted pursuant of Section 2 of
this Agreement upon written notice to LSO to a non-exclusive license in the
Field of Use or (ii) revoke the License provided in such case LSC reimburses LSO
for all amounts paid to LSC for filing, prosecution and maintenance expenses
pursuant to Section 5 prior to the date of such revocation.
10. Disclosures by LSC.
During the Term, LSC shall promptly disclose to LSO all documented new
inventions, discoveries and know-how owned or controlled by LSC that (i) are
related to the LSC Licensed Technology or (ii) are necessary, useful or
requested by LSO for the research, development, manufacture or commercialization
of any Licensed Product, in each case irrespective of any Field of Use
restrictions. Such disclosure to LSO shall be in writing and shall describe such
inventions, discoveries and know-how and any application to the Field of Use
known to LSC.
11. General Provisions.
11.1. Assignment. This Agreement shall be assignable by either party hereto
so long as such assignee agrees in writing to be bound by the terms and
conditions of this Agreement; provided that an assignment by LSC shall be
conditioned upon receipt by LSO of satisfactory evidence of the sale, assignment
or transfer to the same assignee of the LSC Licensed Technology.
11.2. Government Approvals. LSO shall be responsible for obtaining all
necessary governmental approvals for the development, testing, production,
distribution, sale and use of Licensed Products, as applicable, in any country
where Licensed Products shall be manufactured, used, sold, or otherwise
distributed by LSO. LSC agrees to provide LSO, at LSO's expense, with any
assistance reasonably requested by LSO in obtaining such governmental approvals.
11.3. Governing Law; Arbitration. This Agreement shall be governed by and
construed and enforced in accordance with the laws of the State of Washington,
without reference to conflicts of laws principles. Except as specifically set
forth in Section 5.4(d), prior to engaging in any formal dispute resolution with
respect to any dispute, controversy or claim arising out of or in relation to
this Agreement or the breach, termination or invalidity thereof (each, a
"Dispute"), the respective appropriate officers of the parties shall attempt for
a period not less than [ * ] days to resolve such Dispute. Any Dispute that
cannot be settled amicably by agreement of the parties pursuant to the preceding
sentence shall be finally settled by arbitration in Seattle, Washington in
accordance with the arbitration rules of the American Arbitration Association
then in force by one or more arbitrators appointed in accordance with said
rules, provided that the appointed arbitrator(s) shall have appropriate
experience in the biotechnology industry; provided, however, that arbitration
proceeding may not be instituted until the party alleging breach of this
Agreement by the other party has given the other party not less than [ * ] days
notice to remedy any alleged breach and the other party has failed to do so. The
award rendered shall be final and binding upon both parties. The judgment
rendered by the arbitrator(s) shall include costs of arbitration, reasonable
attorneys' fees and reasonable costs for any expert and other witnesses. Nothing
in this Agreement shall be deemed as preventing either party from seeking
injunctive relief (or any other provisional remedy) from any court having
jurisdiction over the parties and the subject matter of the Dispute as necessary
to protect either party's name, proprietary information, trade secrets, know-how
or any other proprietary rights.
----------
[ * ] Confidential Treatment Requested
Judgment upon the award may be entered in any court having jurisdiction or
application may be made to such court for judicial acceptance of the award and
an order of enforcement as the case may be.
11.4. Severability. This Agreement is intended to be severable. Should any
part or provision of this Agreement be found to be unenforceable or invalid for
any reason, the remaining parts and provisions will remain in effect; provided,
however, that in the event of an LSC bankruptcy proceeding, this Agreement must
either be assumed or rejected in its entirety in accordance with Section 365 of
the Bankruptcy Code.
11.5. Entire Agreement. This Agreement constitutes the entire understanding
of LSC and LSO with respect to the subject matter hereof and supersedes all
prior agreements and understandings. This Agreement may be modified only with
the written agreement of both parties.
11.6. Force Majeure. If the performance of any part of this Agreement by
either party, or of any obligation under this Agreement, is prevented,
restricted, interfered with or delayed by reason of any cause beyond the
reasonable control of the party liable to perform, unless conclusive evidence to
the contrary is provided, the party so affected shall, upon giving written
notice to the other party, be excused from such performance to the extent of
such prevention, restriction, interference or delay, provided that the affected
party shall use its reasonable best efforts to avoid or remove such causes of
nonperformance and shall continue performance with the utmost dispatch whenever
such causes are removed. When such circumstances arise, the parties shall
discuss what, if any, modification of the terms of this Agreement may be
required in order to arrive at an equitable solution.
11.7. Waiver. No waiver of any rights shall be effective unless expressly
consented to in writing by the party to be charged and the waiver of any breach
of default shall not constitute a waiver of any other right hereunder or any
subsequent breach or default.
11.8. Notices. All notices and other communications hereunder will be in
writing and will be deemed given if delivered personally, by fax (receipt
confirmed), or by registered or certified mail, return receipt requested and
postage prepaid or sent by express courier service (receipt verified), to the
parties at the following addresses (or at such other addresses for a party as
will be specified by the like notice; provided, that notices of a change of
address will be effective only upon receipt thereof):
If to LSC, addressed to:
Light Sciences Corporation
▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: President
Telephone No.: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy No.: (▇▇▇) ▇▇▇-▇▇▇▇
Copy to:
__________________________________
__________________________________
__________________________________
Attn:_____________________________
If to LSO, addressed to:
Light Sciences Oncology, Inc.
▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: President
Telephone No.: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy No.: (▇▇▇) ▇▇▇-▇▇▇▇
Copy to:
__________________________________
__________________________________
__________________________________
Attn:_____________________________
All such notices and communications shall be deemed effective when received.
11.9. Counterparts. This Agreement may be signed in counterparts, each of
which shall be deemed an original and all of which shall constitute one
instrument.
[Signature Pages Follow]
THIS AGREEMENT IS ACCEPTED AND AGREED TO IN ITS ENTIRETY BY AUTHORIZED
REPRESENTATIVES OF:
"LSC" "LSO"
LIGHT SCIENCES CORPORATION LIGHT SCIENCES ONCOLOGY, INC.
/s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ /s/ ▇.▇. ▇▇▇▇▇▇▇
------------------------------------- ----------------------------------------
Signature Signature
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ ▇.▇. ▇▇▇▇▇▇▇
Name Name
CEO COO
Title Title
------------------------------------- ----------------------------------------
Date Date
APPENDIX A
LSC PATENTS
PATENT FILING ISSUE
STATUS LSC DOCKET NO. APPL. NO. NO. DATE DATE TITLE
------ ---------------- ---------- --------- ---------- ---------- ------------------------
Granted 01-1993-US 08/107,276 5,445,608 8/16/1993 8/29/1995 Method and Apparatus
for Providing
Light-Activated Therapy
Granted 03-1996-US 08/613,390 5,800,478 3/7/1996 9/1/1998 Flexible Microcircuits
for Internal Light
Therapy
Granted 03-1996-CIP 08/633,171 5,766,234 4/16/1996 6/16/1998 Implanting and Fixing a
Flexible Probe for
Administering a Medical
Therapy at a Treatment
Site within a Patient's
Body
Granted 11-1997-US 08/788,451 5,997,569 1/29/1997 12/7/1999 Flexible and Adjustable
Grid for Medical Therapy
Granted 04-1996-US 08/688,058 5,814,008 7/29/1996 9/29/1998 Method and Device for
Applying Hyperthermia
to Enhance Drug
Perfusion and Efficacy
of Subsequent Light
Therapy
Granted 06-1996-US 08/705334 5,715,837 8/29/1996 2/10/1998 Transcutaneous
Electromagnetic Energy
Transfer
Granted 13-1997-US 08/827832 5,827,186 4/11/1997 10/27/1998 Method and PDT Probe
for Minimizing CT and
MRI Image Artifacts
Granted 07-1996-US 08/725578 5,702,432 10/3/1996 12/30/1997 Intracorporeal Light
Treatment of Blood
Granted 09-1996-US 08/760057 6,080,160 12/4/1996 6/27/2000 Use of Shape Memory
Alloy for Internally
Fixing Light Emitting
Device at Treatment Site
Granted 10-1997-US 08/788448 5,782,896 1/29/1997 7/21/1998 Use of a Shape Memory
Alloy for Modifying the
Disposition of a Device
Within an Implantable
Medical Probe
Granted 08-1996-US 08/756945 5,741,316 2/2/1996 4/21/1998 Electromagnetic Coil
Configurations for
Power Transmission
through Tissue
APPENDIX A TO EXCLUSIVE LICENSE AGREEMENT
PATENT FILING ISSUE
STATUS LSC DOCKET NO. APPL. NO. NO. DATE DATE TITLE
------ ---------------- ---------- --------- ---------- ---------- ------------------------
Granted 12-1997-US 08/787,775 5,876,427 1/29/1997 3/2/1999 Compact Flexible
Circuit Configuration
Granted 14-1997-US 08/850909 5,957,960 5/5/1997 9/28/1999 Internal Two Photon
Excitation Device for
Delivery of PDT to
Diffuse Abnormal Cells
Granted 17-1997-US 08/955939 5,865,840 10/22/1997 2/2/1999 Enhancement of Light
Activation Effect by
Immune Augmentation
Granted 18-1998-US 09/021693 5,945,762 2/10/1998 8/31/1999 Movable Magnet
Transmitter for
Inducing Electrical
Current in an Implanted
Coil
Granted 18-1998-CIP(DIV) 09/547,700 6,331,744 4/11/2000 12/18/2004 Contactless Energy
Transfer Apparatus
Granted 18-2001-DIV(CIP) 09/910,364 6,657,351 7/20/2001 12/2/2003 Contactless Energy
Transfer Apparatus
Granted 29-1999-US 09/260923 6,273,904 3/2/1999 8/14/2001 Polymer Battery for
Internal Light Device
Granted 21-1998-US 09/103,761 6,416,531 6/24/1998 7/9/2002 Application of Light at
Plural Treatment Sites
within a Tumor to
Increase the Efficacy
of Light Therapy
Granted 22-1998-US 09/151844 6,096,066 9/11/1998 8/1/2000 Conformal Patch for
Administering Light
Therapy to Subcutaneous
Tumors
Granted 24-1998-US 09/218,336 6,344,050 12/21/1998 2/5/2002 Use of Pegylated
Photosenstizer
Conjugated with an
Antibody for Treating
Abnormal Tissue
Granted 24-2001-DIV 09/909,515 6,554,853 7/20/2001 4/29/2003 Use of Pegylated
Photosensitizer
Conjugated with an
Antibody for Treating
Abnormal Tissue
Granted 30-1999-US 09/350,258 6,210,425 7/8/1999 4/3/2001 Combined Imaging and
PDT Delivery System
Granted 31-1999-US 09/356,938 6,238,426 7/19/1999 5/29/2001 Real-Time Monitoring of
Photodynamic Therapy
Over an Extended Time
Granted 33-1999-US 09/465,545 6,319,273 12/16/1999 11/20/2001 Illuminating Device for
Treating Eye Disease
PATENT FILING ISSUE
STATUS LSC DOCKET NO. APPL. NO. NO. DATE DATE TITLE
------ ---------------- ---------- --------- ---------- ---------- ------------------------
Granted 25-1999-US 09/232,129 6,454,789 1/15/1999 9/24/2002 Patient Portable Device
for Photodynamic Therapy
Granted 27-1999-US 09/271,575 6,602,274 3/18/1999 8/5/2003 Targeted Transcutaneous
Cancer Therapy
Granted 27-2001-CIP 09/905,501 6,899,723 7/13/2001 5/31/2005 Transcutaneous
Photodynamic Treatment
of Targeted Cells
Granted 01-1994-CA 2147142 2147142 6/29/1994 11/28/2000 Method and Apparatus
for Providing
Light-Activated Therapy
Granted 01-1994-DE 94922480.2 0680363 6/29/1994 10/29/2003 Apparatus for Providing
Light-Activated Therapy
Granted 01-1994-EPO 94922480.2 0680363 6/29/1994 10/29/2003 Apparatus for Providing
Light-Activated Therapy
Granted 01-1994-ES 94922480.2 0680363 6/29/1994 10/29/2003 Apparatus for Providing
Light-Activated Therapy
Granted 01-1994-FR 94922480.2 0680363 6/29/1994 10/29/2003 Apparatus for Providing
Light-Activated Therapy
Granted 01-1994-GB 94922480.2 0680363 6/29/1994 10/29/2003 Apparatus for Providing
Light-Activated Therapy
Granted 01-1994-IT 94922480.2 0680363 6/29/1994 10/29/2003 Apparatus for Providing
Light-Activated Therapy
Granted 01-1994-JP 506942/95 3539962 6/29/1994 4/2/2004 Method and Apparatus
for Providing
Light-Activated Therapy
Granted 12-1997-CA 2,276,023 2,276,023 12/1/1997 4/16/2002 Compact Flexible
Circuit Configuration
Granted 12-1997-JP 531961/98 3338066 12/1/1997 8/9/2002 Compact Flexible
Circuit Configuration
Granted 31-2000-AU 52956/00 757479 5/26/2000 6/5/2003 Real-Time Monitoring of
Photodynamic Therapy
over an Extended Time
APPENDIX B
LSC PATENT APPLICATIONS
LSC DOCKET FILING ISSUE
STATUS NO. APPL. NO. PATENT NO. DATE DATE TITLE
------- ------------ --------------- ---------- ---------- ------ -----------------------------------------
Pending 45-2004-US 10/799,357 3/12/2004 Light Generating Device To Intravascular
Use
Pending 47-2004-US 10/888,567 7/8/2004 Light Generating Device That Self
Centers Within A Lumen To Render
Photodynamic Therapy
Pending 48-2004-US 10/888,572 7/9/2004 Device for Distal Protection And
Treatment of Blood Vessels
Pending 38-2003-US 10/351,730 1/23/2003 Systems And Methods For Photodynamic
Therapy
Allowed 25-2002-DIV 10/211,784 8/1/2002 Patient Portable Device for Photodynamic
Therapy
Pending 27-2002-DIV 10/317,269 12/10/2002 Energy-Activated Targeted Cancer Therapy
Pending 27-2003-DIV 10/410,700 4/8/2003 Energy-Activated Targeted Cancer Therapy
Pending 27-2004-CON 10/802,284 3/16/2004 Photodynamic Treatment of Targeted Cells
Pending 27-2004-DIV 11/115,740 4/26/2005 Energy-Activated Targeted Cancer Therapy
Pending 28-2001-US 09/905,777 7/13/2001 Noninvasive Vascular Therapy
Pending 28-2001-DIV 10/899,834 7/26/2004 Noninvasive Vascular Therapy
Pending 32-1999-US 09/386,692 8/31/1999 Extended Duration Light Activated Cancer
Therapy
Pending 34-2001-US 09/760,362 1/12/2001 Novel Treatment for Eye Disease
Pending 49-2004-US 10/951,037 9/23/2004 Singlet Oxygen Photosensitizers
Activated By Target Binding Enhancing The
Selectivity Of Targeted PDT Agents
LSC DOCKET FILING ISSUE
STATUS NO. APPL. NO. PATENT NO. DATE DATE TITLE
------- ------------ --------------- ---------- ---------- ------ -----------------------------------------
Pending 42-2003-US 10/677,645 10/2/2003 System And Method For Excitation Of
Photoreactive Compounds In Eye Tissue
Pending 39-2003-US 10/687579 10/16/2003 Photodynamic Therapy For Local Adipocyte
Reduction
Pending 51-2005-US Not yet 3/28/2005 Fractionated Light PDT Therapy For
assigned Posterior Eye Disease
Pending 53-2004-PROV 60/614,095 9/29/2004 Separation And Purification Of Chlorin e(6)
Pending 54-2004-PROV 60/610397 9/15/2004 Surgical Introducing Sheath With
Instrument Fixation Structures
Pending 55-2004-PROV 60/612929 9/24/2004 Ablation of Tumors with Light Activated
Drugs
Pending 56-2004-PROV 60/616,239 10/5/2004 Low Energy of Excitation PDT Compounds
for Treatment of Ocular Disease
Pending 57-2004-PROV 60/623,317 10/29/2004 Active Contact Lens For Ocular
Photodynamic Therapy
Pending 58-2004-PROV 60/636,852 12/14/2004 Enhanced Effect Photodynamic Therapy
Pending 60-2004-PROV 60/637,365 12/17/2004 Addressable Arrays of Light Emitters
Pending 59-2004-PROV 60/640,382 12/30/2004 Flexible LED Arrays for Phototherapeutic
Procedures
Pending 63-2005-PROV 60/654,576 2/17/2005 Photoreactive System And Methods For
Prophylactic Treatment Of Atherosclerosis
Pending [ * ] [ * ] [ * ] Method and Apparatus to Diagnose, Detect
and Predict Discontinuities in the Skin
Pending [ * ] [ * ] [ * ] System for Thermoelectric Recovery of
Engine Waste Heat
-------------
[*] Confidential Treatment Requested
-2-
LSC DOCKET FILING ISSUE
STATUS NO. APPL. NO. PATENT NO. DATE DATE TITLE
------- ------------ --------------- ---------- ---------- ------ -----------------------------------------
Pending [ * ] [ * ] [ * ] Method and Apparatus for Magnetic
Braking and Recovery of Vehicle Waste
Energy
Pending 01-2003-EPO 03010382.4 5/10/2003 Method and Apparatus for Providing
(DIV) Light-Activated Therapy
Pending 11-1997-JP 531960/98 12/1/1997 Flexible and Adjustable Grid for Medical
Therapy
Pending 12-1997-EPO 97950720.9 12/1/1997 Compact Flexible Circuit Configuration
Pending 12-2000-HK 00108414.1 12/27/2000 Compact Flexible Circuit Configuration
Pending 18-2001-JP 2001-574963 4/10/2001 Contactless Energy Transfer Apparatus
Pending 21-1999-CA 2,335,575 4/30/1999 Application of Light at Plural Treatment
Sites Within a Tumor to Increase Efficacy
of Photodynamic Therapy
Pending 21-1999-EPO 99921597.3 4/30/1999 Application of Light at Plural Treatment
Sites Within a Tumor to Increase Efficacy
of Photodynamic Therapy
Pending 21-1999-JP 2000-555671 4/30/1999 Application of Light at Plural Treatment
Sites Within a Tumor to Increase Efficacy
of Photodynamic Therapy
Pending 21-1999-HK 99921597.3 4/30/1999 Application of Light at Plural Treatment
Sites Within a Tumor to Increase Efficacy
of Photodynamic
Pending 22-1999-CA 2,341,235 8/20/1999 Patch Therapy for Administering Light
Therapy to Subcutaneous Tumors
Pending 22-1999-EPO 99942359.3 8/20/1999 Patch Therapy for Administering Light
Therapy to Subcutaneous Tumors
Pending 22-1999-JP 2000-569880 8/20/1999 Patch Therapy for Administering Light
Therapy to Subcutaneous Tumors
-------------
[*] Confidential Treatment Requested
-3-
LSC DOCKET FILING ISSUE
STATUS NO. APPL. NO. PATENT NO. DATE DATE TITLE
------- ------------ --------------- ---------- ---------- ------ -----------------------------------------
Pending 22-1999-HK 01108910.9 12/19/2001 Patch Therapy for Administering Light
Therapy to Subcutaneous Tumors
Pending 31-2000-CA 2,377,293 5/26/2000 Real-Time Monitoring of Photodynamic
Therapy over an Extended Time
Pending 31-2000-EP 00937833.2 5/26/2000 Real-Time Monitoring of Photodynamic
Therapy over an Extended Time
Pending 31-2000-JP 2001-510378 5/26/2000 Real-Time Monitoring of Photodynamic
Therapy over an Extended Time
Pending 33-2000-CA 2,392,313 12/5/2000 Illuminating Device For Treating Eye
Disease
Pending 33-2000-EPO 00982460.8 12/5/2000 Illuminating Device For Treating Eye
Disease
Pending 33-2000-JP 2001-544954 12/5/2000 Illuminating Device For Treating Eye
Disease
Pending 45-2004-PCT PCT/US04/07563 3/12/2004 Light Generating Device To Intravascular
Use
Pending 47-2004-PCT PCT/US04/23451 7/8/2004 Light Generating Device That Self
Centers Within A Lumen To Render
Photodynamic Therapy
Pending 48-2004-US PCT/US04/22130 7/9/2004 Device for Distal Protection And
Treatment of Blood Vessels
Pending 38-2004-CA 2,473,924 1/23/2003 Systems And Methods For Photodynamic
Therapy
Pending 38-2004-EP 03704019.3 1/23/2003 Systems And Methods For Photodynamic
Therapy
Pending 38-2004-HK 03704019.3 1/23/2003 Systems And Methods For Photodynamic
Therapy
Pending 38-2004-JP 2003-561639 1/23/2003 Systems And Methods For Photodynamic
Therapy
Pending 25-2000-CA 2,356,478 1/14/2000 Patient Portable Device for Photodynamic
Therapy
-4-
LSC DOCKET FILING ISSUE
STATUS NO. APPL. NO. PATENT NO. DATE DATE TITLE
------- ------------ --------------- ---------- ---------- ------ -----------------------------------------
Allowed 25-2000-EPO 00905599.7 1/14/2000 Patient Portable Device for Photodynamic
Therapy
Pending 25-2000-JP 2000-593376 1/14/2000 Patient Portable Device for Photodynamic
Therapy
Pending 27-2000-CA 2,356,776 1/14/2000 Transcutaneous Photodynamic Treatment of
Targeted Cells
Pending 27-2000-EPO 00902416.7 1/14/2000 Transcutaneous Photodynamic Treatment of
Targeted Cells
Pending 27-2000-JP 2000-593337 1/14/2000 Transcutaneous Photodynamic Treatment of
Targeted Cells
Pending 28-2000-CA 2,356,532 1/14/2000 Noninvasive Vascular Therapy
Pending 28-2000-EPO 00902405.0 1/14/2000 Noninvasive Vascular Therapy
Pending 28-2000-JP 2000-593336 1/14/2000 Noninvasive Vascular Therapy
Pending 32-2000-CA 2,382,345 8/31/2000 Extended Duration Light Activated Cancer
Therapy
Pending 32-2000-EP 00957944.2 8/31/2000 Extended Duration Light Activated Cancer
Therapy
Pending 32-2000-JP 2001-519908 8/31/2000 Extended Duration Light Activated Cancer
Therapy
Pending 34-2001-CA 2,395,567 1/12/2001 Novel Treatment for Eye Disease
Pending 34-2001-EP 01901987.6 1/12/2001 Novel Treatment for Eye Disease
Pending 34-2001-JP 2001-551510 1/12/2001 Novel Treatment for Eye Disease
Pending 42-2003-IN Not yet 10/2/2003 System And Method For Excitation Of
assigned Photoreactive Compounds In Eye Tissue
-5-
LSC DOCKET FILING ISSUE
STATUS NO. APPL. NO. PATENT NO. DATE DATE TITLE
------- ------------ --------------- ---------- ---------- ------ -----------------------------------------
Pending 42-2003-IN Not yet 10/2/2003 System And Method For Excitation Of
assigned Photoreactive Compounds In Eye Tissue
Pending 42-2003-IN Not yet 10/2/2003 System And Method For Excitation Of
assigned Photoreactive Compounds In Eye Tissue
Pending 42-2003-IN Not yet 10/2/2003 System And Method For Excitation Of
assigned Photoreactive Compounds In Eye Tissue
Pending 42-2003-IN Not yet 10/2/2003 System And Method For Excitation Of
assigned Photoreactive Compounds In Eye Tissue
Pending 49-2004-PCT PCT/US04/031342 9/23/2004 Singlet Oxygen Photosensitizers
Activated By Target Binding Enhancing The
Selectivity Of Targeted PDT Agents
Pending 39-2003-PCT PCT/US04/034042 10/16/2004 Photodynamic Therapy For Local Adipocyte
Reduction
Pending 55-2005-PCT Not yet 1/7/2005 Extended Treatment of Tumors Through
assigned Vessel Occlusion with Light
Activated Drugs
Pending 55-2005-TW Not yet 1/7/2005 Extended Treatment of Tumors Through
assigned Vessel Occlusion with Light
Activated Drugs
Pending 61-2005-PROV 60/652,399 2/11/2005 Customized Nutrients For Weight
Reduction, Control And Behavior
Modification
Pending 60-2004-PROV 60/637,365 12/17/2004 Addressable Arrays of Light Emitters
Pending [ * ] [ * ] [ * ] Fractionated Light PDT Therapy For
Posterior Eye Disease
-------------
[*] Confidential Treatment Requested
-6-
APPENDIX C
LSC Trademark Status
January 2005
DOCKET NO. TRADEMARK STATUS CLASS FILING DATE SERIAL NO.
---------- ------------------------- ---------- ----- ----------- ----------
TM-003 Light Sciences Allowed 5 4/24/2000 76/032,640
TM-004 Light Sciences Registered 10 4/24/2000 76/032,432
TM-010 Light Infusion Technology Allowed 5 3/19/2002 76/383,957
TM-011 Light Infusion Technology Allowed 10 3/19/2002 76/383,716
TM-013 LITX Allowed 10 5/14/2002 76/407,935