EXHIBIT 99.5
ONGOING
LITIGATION AGREEMENT
THIS ONGOING LITIGATION AGREEMENT (the "AGREEMENT") is entered into
this 24th day of July, 2003 by and between IGEN INTERNATIONAL, INC., a
corporation duly organized and validly existing under the laws of the State of
Delaware, ("IGEN"), ROCHE DIAGNOSTICS Gmbh (formerly Boehringer Mannheim GmbH),
a company duly organized and validly existing under the laws of the Federal
Republic of Germany, and ROCHE DIAGNOSTICS CORPORATION, a corporation duly
organized and validly existing under the laws of the State of Indiana
(collectively "ROCHE") (collectively, the "PARTIES").
RECITALS
WHEREAS, simultaneously with the execution and delivery of this
Agreement, Roche Holding Ltd and IGEN, together with certain other specified
parties, have executed an Agreement and Plan of Merger of even date herewith
(the "MERGER AGREEMENT"), pursuant to which an Affiliate of Roche will merge
with and into IGEN; and
WHEREAS, IGEN and Roche agree that it is in their best interests that
the Parties take certain actions in connection with the following legal
proceedings involving the Parties: Igen International Inc. ▇. ▇▇▇▇▇ Diagnostics
GmbH, Case No. PJM 97CV3461 (D. Md. filed October 15, 1997), appealed as Appeal
No. 02-1537 (4th Circuit decided July 9, 2003), and any successor action (the
"MARYLAND CONTRACT ACTION"), Igen International Inc. ▇. ▇▇▇▇▇ Diagnostics GmbH
and Roche Diagnostics Inc., Case No. PJM 03CV2000 (D. Md. filed July 9, 2003)
and any successor action (the "MARYLAND PATENT ACTION"), and Igen International
Inc. ▇. ▇▇▇▇▇ Diagnostics GmbH and Roche Diagnostics Inc., File No. LG
Dusseldorf 4b O ▇▇▇/▇▇ (▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ filed July 9, 2003) and any
successor action (the "GERMAN PATENT ACTION"); and
WHEREAS, IGEN and Roche agree that the actions contemplated by this
Agreement be without prejudice to either Party with regard to any action that
either Party might have taken in the Maryland Contract Action, the Maryland
Patent Action or the German Patent Action, including the filing of a preliminary
injunction by IGEN in the Maryland Patent Action, and the filing of an
interlocutory injunction by IGEN in addition to the German Patent Action.
NOW, THEREFORE, in consideration of the mutual premises and covenants
hereinafter set forth, the Parties agree as follows:
ARTICLE 1
DEFINITIONS
As used in this Agreement, capitalized terms shall have the respective
meanings set forth below. Capitalized terms used but not defined in this
Agreement shall have the meaning given to such terms in the Merger Agreement:
1.1 AFFILIATE. "Affiliate" of any person means another person that
directly or indirectly, through one or more intermediaries, controls, is
controlled by, or is under common
control with, such first person. Neither Genentech Inc., ▇ ▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, ▇▇▇ nor Chugai Pharmaceutical Co., Ltd, ▇-▇
▇▇▇▇▇▇▇▇ ▇-▇▇▇▇▇, ▇▇▇▇-▇▇, ▇▇▇▇▇, ▇▇▇-▇▇▇▇, ▇▇▇▇▇ shall be deemed an Affiliate
of Roche for purposes of this Agreement. Neither Meso Scale Diagnostics, LLC.,
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇ nor Meso Scale
Technologies, LLC., ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇ shall
be deemed an Affiliate of IGEN for purposes of this Agreement.
1.2 COMMERCIAL AGREEMENTS. "Commercial Agreements" shall have the
meaning set forth in the Merger Agreement.
1.3 EFFECTIVE TIME. "Effective Time" shall have the meaning as set
forth in the Merger Agreement.
1.4 FOURTH CIRCUIT. "Fourth Circuit" shall mean the U.S. Court of
Appeals for the Fourth Circuit.
1.5 FOURTH CIRCUIT OPINION. "Fourth Circuit Opinion" shall mean
the opinion of the Fourth Circuit issued on July 9, 2003 in the Maryland
Contract Action.
1.6 GERMAN JOINT MOTION TO STAY. "German Joint Motion to Stay"
shall mean the joint motions to stay the German Patent Action in the forms
attached hereto as Appendix A.
1.7 GERMAN PATENT ACTION. "German Patent Action" shall have the
meaning set forth in the Recitals, or any re-filing thereof as contemplated by
Section 2.4 and the German Patent Interlocutory Injunction.
1.8 GERMAN PATENT INTERLOCUTORY INJUNCTION. "German Patent
Interlocutory Injunction" shall mean an interlocutory injunction proceeding
("Einstweiliges Verfugungsverfahren") directed at the same or part of the same
matter under dispute as the German Patent Action.
1.9 GOVERNMENTAL ENTITY. "Governmental Entity" shall mean any
domestic or foreign (whether a national, federal, state, provincial, local or
otherwise) government or any court of competent jurisdiction, agency or
commission or other governmental authority or instrumentality, domestic or
foreign.
1.10 IGEN/ROCHE ACTIONS. "IGEN/Roche Actions" shall mean the
Maryland Patent Action and the German Patent Action.
1.11 LICENSE AGREEMENT. "License Agreement" shall mean the License
and Technology Agreement between IGEN and Roche Diagnostics, GmbH (formerly
Boehringer Mannheim, GmbH) dated as of September 23, 1992.
1.12 MARYLAND CONTRACT ACTION. "Maryland Contract Action" shall
have the meaning set forth in the Recitals.
1.13 MARYLAND DISTRICT COURT. "Maryland District Court" shall mean
United States District Court for the District of Maryland, Southern Division
located in Greenbelt, Maryland.
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1.14 MARYLAND JOINT MOTION. "Maryland Joint Motion to Stay" shall
mean the joint motion to stay the Maryland Patent Action and proposed form of
Order in the forms attached hereto as Appendix B.
1.15 MARYLAND PATENT ACTION. "Maryland Patent Action" shall have
the meaning set forth in the Recitals, or any re-filing thereof as contemplated
by Section 2.4.
1.16 MERGER. "Merger" shall mean the "Merger" as defined in the
Merger Agreement.
1.17 MERGER AGREEMENT. "Merger Agreement" shall have the meaning
set forth in the Recitals.
1.18 PERSON. "person" shall mean any individual, firm, corporation,
partnership, company, limited liability company, trust, joint venture,
association, Governmental Entity or other entity.
1.19 TRANSACTION AGREEMENTS. "Transaction Agreements" shall have
the meaning set forth in the Merger Agreement.
1.20 TERMINATION DATE. "Termination Date" shall mean the earlier to
occur of: (i) the Effective Time, or (ii) the termination of the Merger
Agreement in accordance with its terms.
ARTICLE II
STAND STILL PROVISIONS
2.1 MARYLAND PATENT ACTION Immediately following the execution and
delivery of this Agreement, the Parties shall file, or cause to be filed, the
Maryland Joint Motion to Stay with the Maryland District Court. Until the
Termination Date, each of the Parties agrees, and shall cause its Affiliates, to
take such further actions as may be reasonably necessary, appropriate,
desirable, or required in order to facilitate the Maryland District Court
entering and maintaining the order contemplated by the Maryland Joint Motion to
Stay.
2.2 MARYLAND CONTRACT ACTION Roche agrees for itself and its
Affiliates that it shall file or cause to be filed any and all motions,
pleadings and documents in the Maryland Contract Action appropriate or necessary
to withdraw its petition for panel rehearing filed on July 23, 2003. Each of the
Parties agrees, for itself and its Affiliates, that: (i) it shall not take any
action or file any additional motions or pleadings in the Maryland Contract
Action, including any further motions for rehearing or rehearing en banc that
may be or could be filed with the Fourth Circuit, or any petition for writ of
certiorari to the United States Supreme Court, in the Maryland Contract Action;
(ii) it shall take any and all action that may reasonably be required or
necessary in order to stay, or withdraw with the right to refile, any motion
filed prior to the date hereof in the Maryland District Court with respect to
the Maryland Contract Action that remains pending; and (iii) any time periods or
limitations with respect to the right of any Party to appeal any order of the
Maryland District Court entered in the Maryland Contract Action on or after the
date hereof shall be tolled until the Termination Date.
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2.3 GERMAN PATENT ACTION The Parties specifically agree that IGEN
shall be authorized to proceed to serve or have served on Roche, and that Roche
shall be authorized to indicate to the court its intention to defend itself in,
the German Patent Action. The Parties further agree to jointly take all steps
necessary to stay the German Patent Action after service especially by
requesting a stay ("Ruhen des Verfahrens gemass Section 251 ZPO") until the
Termination Date by filing German Joint Motion to Stay within a week after the
date of this Agreement. Roche will refrain from taking any steps to achieve a
dismissal of the German Patent Action at any time before the Termination Date.
However, to the extent that dismissal occurs before the Termination Date, Roche
and IGEN shall take all steps necessary promptly to re-instate the German Patent
Action through to the Termination Date.
2.4 SUBSEQUENT ACTIONS. (a) Notwithstanding anything to the
contrary contained in this Agreement, IGEN shall, upon advice of counsel in
order to preserve its legal rights being asserted in the IGEN/Roche Actions, be
permitted to withdraw and promptly re-file any of the IGEN/Roche Actions and
such withdrawal and re-filing shall not be a violation of any of IGEN's
obligations hereunder. Such refiled actions shall be within the definition of
the IGEN/Roche Actions. Roche covenants and agrees that it shall not object to
the withdrawal and re-filing of a complaint or other pleading in any of the
IGEN/Roche Actions.
(b) Promptly after the Effective Time: (i) IGEN shall, and
shall cause its Affiliates to, withdraw and terminate each of the IGEN/Roche
Actions and use its reasonable best efforts to cause the dismissal of such
actions as soon thereafter as practicable; and (ii) Roche shall, and shall cause
its Affiliates to, cooperate and use its reasonable best efforts to cause the
dismissal of the IGEN/Roche Actions. If the pleadings, motions, filings and
other submissions to or with the courts having jurisdiction over the IGEN/Roche
Actions would adversely impact the intellectual property of IGEN Integrated
Healthcare, LLC (or any successor thereto), then such pleading, filing or
submission shall be made only after IGEN and Roche have received the prior
written consent of IGEN Integrated Healthcare, LLC. (or any successor thereto),
which consent shall not be unreasonably withheld, conditioned or delayed. IGEN
Integrated Healthcare, LLC., shall be a third party beneficiary of this
provision and shall be entitled to enforce this right as though it were a party
hereto.
ARTICLE 3
ONGOING OBLIGATIONS AND COVENANTS
3.1 COVENANT OF COOPERATION. (a) Each Party agrees, for itself and
its Affiliates, to cooperate with the other Party in all reasonable respects,
including in the preparation, execution and filing of all necessary or
appropriate papers with the appropriate forums, to consummate and carry out the
purposes and intent of each of the provisions of Article 2 of this Agreement.
(b) Each of the Parties agrees, for itself and its Affiliates,
that prior to the Termination Date it shall take all further necessary steps and
actions before the court or courts having jurisdiction over of the IGEN/Roche
Actions to avoid dismissal of the complaints pending in each of those cases
prior to the Termination Date; provided, however, that to the extent that either
of the IGEN/Roche Actions is dismissed by the court having jurisdiction in the
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matter for any reason prior to the Termination Date, Roche shall not oppose (and
if necessary take appropriate action to allow) the taking by IGEN of all steps
reasonably necessary or desirable to re-instate the IGEN/Roche Action so
dismissed.
3.2 NO INCONSISTENT ACTIONS. Each of the Parties, for itself and
its Affiliates, agrees not to take any action before the Termination Date in
derogation of or inconsistent with the obligations specified in this Agreement,
including filing or prosecuting (other than requesting or providing for service
of process and indicating an intention to defend as contemplated by Section 2.3)
any inter partes or ex parte proceedings anywhere in the world in any court,
patent office or other governmental relating to the subject matter of the
IGEN/Roche Actions or to any of the patents that are the subject of any of the
IGEN/Roche Actions, or any patent in any country claiming priority to any of the
applications to which the patents in suit claim priority.
3.3 COVENANT NOT TO ▇▇▇. IGEN agrees that it shall not commence
any new patent suit or prosecute any patent suit against Roche for any acts of
Roche occurring between the date of the termination of the License Agreement
through to (but not subsequent to) the Termination Date that, if taken prior to
termination of the License Agreement, would have been within the scope of the
license granted under the License Agreement. Nothing in this Agreement shall
preclude IGEN or any of its Affiliates from asserting or filing, and IGEN for
itself and each of its Affiliates reserves the right to assert and file, any
claim, suit, action and proceeding against Roche and any of its Affiliates for
any acts taken after the date of the termination of the License Agreement that
are not within the scope of the license granted under the License Agreement.
3.4 COMPLIANCE WITH JUDGMENT.
(a) Until the Effective Time, each of IGEN and Roche shall,
and shall cause each of its Affiliates to, comply with all of its obligations
under and in respect of the final judgment entered by the United States District
Court for the District of Maryland in the License Litigation on February 15,
2002 (the "Final Judgment") (as modified by the Court of Appeals Opinion) or any
final judgment entered not inconsistent with the mandate to be returned by the
United States Court of Appeals for the Fourth Circuit in connection with the
Court of Appeals Opinion.
(b) Each of IGEN and Roche shall, and shall cause each of its
Affiliates to, take any and all action necessary to cause the United States
District Court for the District of Maryland to enter a final judgment not
inconsistent with the mandate to be returned by the United States Court of
Appeals for the Fourth Circuit in connection with the Court of Appeals Opinion.
3.5 PRESERVATION OF RIGHTS. The Parties agree that nothing in this
Agreement can be construed as a waiver of any rights, and is without prejudice
to the ability, of both Parties to prosecute the IGEN/Roche Actions, and any
other actions not prosecuted as a result of this Agreement, after the
Termination Date. Without limiting the generality of the foregoing, Roche
covenants and agrees that it shall not, and shall not permit any of its
Affiliates, to argue or assert that the period between the date of this
Agreement and the Termination Date constitutes undue or unreasonable delay (or
advancing any similar or comparable argument) in IGEN's filing for or seeking a
motion for a preliminary injunction or an interlocutory injunction in either of
the
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IGEN/Roche Actions or that any such motion was not timely filed as a result
of IGEN's complying with its obligations under this Agreement.
ARTICLE 4
PAYMENTS
4.1 PAYMENTS.
(a) Not later than two Business Days after the date of this
Agreement, Roche shall pay to IGEN $18.6 million as full payment of the
compensatory damages awarded in the Maryland Contract Action.
(b) Not later than two Business Days after the date of this
Agreement, Roche shall pay to IGEN $10.62 million as full payment to IGEN for
royalties due and payable under the License Agreement for sales made in the
second calendar quarter ended June 30, 2003.
(c) Not later than two Business Days after the date of this
Agreement, Roche shall pay to IGEN $5.0 million as partial consideration for
this Agreement.
(d) On the last Business Day of each month during the term of
this Agreement, commencing in August, 2003, Roche shall pay to IGEN $5.0 million
as partial consideration for this Agreement; provided, however, that with
respect to the month in which the Termination Date occurs, Roche shall pay to
IGEN immediately prior to the Effective Time (or, if such Termination Date
occurred as a result of a termination of the Merger Agreement, on or prior to
the second Business Day following such Termination Date) a pro rata portion of
such monthly amount based on the number of days in such month to, but excluding,
the Termination Date.
(e) Any payment due to IGEN under this Agreement shall be paid
by wire transfer of immediately available funds on the date such payment is due.
All payments due under this Agreement shall be made in U.S. dollars.
(f) IGEN agrees and acknowledges that no additional royalty
payments are or will be due or payable under the License Agreement for any
period prior to the date hereof or during the term of this Agreement.
(g) For purposes of this Article 4, "Business Day" shall mean
any day other than a Saturday, Sunday and any day on which the banks in Germany,
Switzerland or the United States or the federal courts in the United States are
permitted or required by applicable Law to close.
ARTICLE 5
[RESERVED]
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ARTICLE 6
TERM AND TERMINATION
6.1 TERM. Except as provided in Section 6.2, below, unless
otherwise agreed by the Parties, this Agreement shall remain in full force and
effect from and after the date first set forth above until the Termination Date.
6.2 TERMINATION.
IGEN may, in its sole discretion, terminate this Agreement if Roche fails to
make any payment when due, which failure has not been cured within ten days
after IGEN has delivered to Roche written notice thereof.
6.3 CONSEQUENCES OF TERMINATION. In the event of any termination
or expiration of this Agreement, IGEN shall be entitled to continue to prosecute
the IGEN/Roche Actions without delay and both Parties covenant and agree that it
shall not use this Agreement or any actions taken by any of the Parties
hereunder for any purpose, including as evidence in or in support of any
allegation made in, or any possible defense to, the IGEN/Roche Actions.
Notwithstanding the expiration or termination of this Agreement, the provisions
of Articles 1 and 8, and Sections 2.4, 3.3, 3.5, 4.1(d), 4.1(e) and 6.3, shall
survive.
ARTICLE 7
REPRESENTATIONS AND WARRANTIES
Each Party hereby represents and warrants to the other that: (i) it has not
filed or commenced any suit, claim, demand, proceeding or action ("ACTION")
against the other Party and there is no such Action pending against the other
Party, other than for the Maryland Contract Claim, the Maryland Patent Action,
and the German Patent Action; and (ii) no consent, notice, approval,
authorization, waiver or permit, to or from any person (other than the consent
attached hereto), including any Governmental Entity or third party is required
to be obtained or made by in connection with its execution, delivery and
performance of this Agreement.
ARTICLE 8
MISCELLANEOUS
8.1 WAIVER. No delay or omission on the part of either Party to
this Agreement in requiring performance by the other Party or in exercising any
right hereunder shall operate as a waiver of any provision hereof or of any
right or rights hereunder; and the waiver, omission or delay in requiring
performance or exercising any right hereunder on any one occasion shall not be
construed as a bar to or waiver of such performance or right, or of any right or
remedy under this Agreement, on any future occasion. Any agreement on the part
of either Party to any such
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extension or waiver shall be valid only if set forth in an instrument in writing
signed on behalf of such Party.
8.2 ASSIGNMENT. This Agreement shall be binding upon and inure to
the benefit of the Parties hereto and their permitted successors and assigns;
provided, however, that neither Party shall assign any of its rights and
obligations hereunder except as consented to by the other Party, which consent
may be granted or withheld in the sole and absolute discretion of the
non-assigning Party. In addition, IGEN agrees that this Agreement shall not be
assigned or assignable to IGEN Integrated Healthcare, LLC as a part of the
transactions contemplated by the Merger Agreement and shall remain a Continuing
Company Asset as that term is defined in the Restructuring Agreement. Any
assignment not in accordance with this Section 8.2 shall be void.
8.3 NOTICES. Any notice or other communication required or
permitted to be given to either Party hereto shall be in writing and shall be
deemed to have been properly given and to be effective on the date of delivery
if delivered in person or by facsimile (with electronic confirmation of receipt
and with a confirmation copy sent by internationally-recognized air courier
service), to such Party at the following address:
In the case of IGEN: In the case of Roche Diagnostics, GmbH:
------------------- ---------------------------------------
IGEN International, Inc. Roche Diagnostics GmbH
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ Sandhofer Strasse 116
▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇-▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America Federal Republic of Germany
Attention: President Attention: Legal Department
Fax No.: ▇▇▇-▇▇▇-▇▇▇▇ Fax No.: ▇▇▇-▇▇-▇▇▇-▇▇▇-▇▇▇▇
with copies to: In the case of Roche Diagnostics Corporation
Cravath, Swaine & ▇▇▇▇▇ LLP Roche Diagnostics Corporation
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ Attention: ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ Fax No.: ▇▇▇-▇▇▇-▇▇▇▇
Fax No.: ▇▇▇-▇▇▇-▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇ & ▇▇▇▇▇▇▇▇▇ with copies, in the case of Roche Diagnostics, GmbH or
▇▇▇▇ ▇ ▇▇▇▇▇▇, ▇.▇. ▇▇▇▇▇ Diagnostics Corporation, to:
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ & ▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇. ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Fax No.: ▇▇▇-▇▇▇-▇▇▇▇ ▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇▇▇▇▇
Finnegan, Henderson, Farabow, Fax No.: ▇▇▇-▇▇▇-▇▇▇▇
▇▇▇▇▇▇▇ & Dunner, L.L.P.
▇▇▇▇ ▇ ▇▇▇▇▇▇, ▇.▇.
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
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Attention: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Fax No.: ▇▇▇-▇▇▇-▇▇▇▇
8.4 HEADINGS. The headings of the several Sections are inserted
for convenience of reference only and are not intended to be a part of or to
affect the meaning or interpretation of this Agreement.
8.5 FORCE MAJEURE. Any delays in performance by any Party under
this Agreement (other than a Party's failure to make payments hereunder) shall
not be considered a breach of this Agreement if and to the extent caused by
occurrences beyond the reasonable control of the Party affected, including acts
of God, embargoes, governmental restrictions, strikes or other concerted acts of
workers, fire, flood, explosion, riots, wars, civil disorder, rebellion or
sabotage. The Party suffering such occurrence shall immediately notify the other
Party and any time for performance hereunder shall be extended by the actual
time of delay caused by the occurrence.
8.6 INDEPENDENT CONTRACTORS. In granting, performing or exercising
rights under this Agreement, Roche and IGEN are and shall act at all times as
independent contractors and nothing contained in this Agreement shall be
construed or implied to create an agency, partnership or employer and employee
relationship between IGEN and Roche. At no time shall one Party make commitments
or incur any charges or expenses for or in the name of the other Party.
8.7 SEVERABILITY. If any term or other provision of this Agreement
is invalid, illegal or incapable of being enforced by any applicable Law, or
public policy, all other conditions and provisions of this Agreement shall
nevertheless remain in full force and effect so long as the economic or legal
substance of the transactions contemplated hereby is not affected in any manner
materially adverse to any party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that transactions contemplated hereby are fulfilled to the extent
possible.
8.8 INTERPRETATION. The official text of this Agreement shall be
English. For purposes of this Agreement, except as otherwise expressly provided
or unless the context otherwise requires:
(a) the terms of this Agreement do not amend or supersede, and shall
not be used to interpret, the terms of the Merger Agreement or any of the
Transaction Agreements or Commercial Agreements specified therein, including the
Covenants Not to ▇▇▇ (as defined in the Merger Agreement);
(b) the terms defined in this Agreement have the meanings assigned to
them in this Agreement and include the plural as well as the singular, and the
use of any gender herein shall be deemed to include the other gender;
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(c) references herein to "Sections," "Subsections," "Paragraphs," and
other subdivisions without reference to a document are to designated Sections,
Subsections, Paragraphs and other subdivisions of this Agreement;
(d) a reference to a Subsection without further reference to a Section
is a reference to such Subsection as contained in the same Section in which the
reference appears, and this rule shall also apply to Paragraphs and other
subdivisions;
(e) the words "herein," "hereof," "hereunder," and other words of
similar import refer to this Agreement as a whole and not to any particular
provision;
(f) the term "include" or "including" shall mean "including without
limitation";
(g) the term "to the extent" shall mean the degree to which a subject
or other thing extends, and such phrase shall not mean simply "if";
(h) the term "or" is not exclusive; and
(i) the Appendices to this Agreement are hereby incorporated and made a
part hereof and are an integral part of this Agreement.
8.9 CUMULATIVE RIGHTS. The rights, powers and remedies hereunder
shall be in addition to, and not in limitation of, all rights, powers and
remedies provided at law or in equity. All of such rights, powers and remedies
shall be cumulative, and may be exercised successively or cumulatively.
8.10 ENTIRE AGREEMENT; AMENDMENT. This Agreement, taken together
with the other Transactions Agreements, the Commercial Agreements, the
Confidentiality Agreement and the Letter Agreement, embodies the entire
understanding of the Parties with respect to the subject matter hereof and shall
supersede all previous communications, representations or understandings, either
oral or written, between the Parties relating to the subject matter hereof. This
Agreement shall not be amended, altered or changed except by a written agreement
signed by all of the Parties hereto.
8.11 NO THIRD PARTY BENEFICIARY RIGHTS. Except for the provisions
of Section 2.4(b) related to dismissal of the IGEN/Roche Actions following the
Termination Date, nothing contained in this Agreement is intended to confer upon
any person other than the Parties hereto and their respective successors and
permitted assigns, any benefit, right or remedy under or by reason of this
Agreement.
8.12 COUNTERPARTS; EFFECTIVENESS. This Agreement may be executed in
two or more counterparts, each of which shall be deemed to be an original but
all of which shall constitute one and the same agreement. This Agreement shall
not become effective unless and until (i) signed and delivered by all Parties;
and (ii) joined by Meso Scale Diagnostics, LLC. and Meso Scale Technologies,
LLC. as evidenced by each of those companies signing the Joinder set forth on
the signature page herof.
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8.13 GOVERNING LAW. This Agreement shall be governed by, and
construed in accordance with, the laws of the State of New York, regardless of
the laws that might otherwise govern under applicable principles of conflicts of
laws thereof.
8.14 ENFORCEMENT; CONSENT TO SERVICE OF PROCESS. The Parties agree
that irreparable damage would occur in the event that any of the provisions of
this Agreement were not performed in accordance with their specific terms or
were otherwise breached. It is accordingly agreed that the parties shall be
entitled to an injunction or injunctions to prevent breaches of this Agreement
and to enforce specifically the terms and provisions of this Agreement in any
New York state court or any Federal court of the United States of America
sitting in New York City, this being in addition to any other remedy to which
they are entitled at law or in equity. In addition, each of the parties hereto
(i) consents to submit itself exclusively to the personal jurisdiction of any
New York state court or any Federal Court of the United States sitting in New
York City in the event any dispute arises out of this Agreement, (ii) agrees
that it will not attempt to deny or defeat such personal jurisdiction by motion
or other request for leave from any such court, (iii) agrees that it will not
bring any action relating to this Agreement in any court other than in any New
York state court or any Federal court of the United States of America sitting in
New York City and (iv) waives any right to trial by jury with respect to any
action related to or arising out of this Agreement.
11
IN WITNESS WHEREFORE, THE PARTIES HAVE CAUSED THIS AGREEMENT TO BE
EXECUTED ON ITS BEHALF BY ITS DULY AUTHORIZED REPRESENTATIVE, ALL AS OF THE DATE
FIRST ABOVE WRITTEN.
IGEN INTERNATIONAL, INC. ROCHE DIAGNOSTICS GmbH
By: /s/ ▇.▇. ▇▇▇▇▇▇▇
_________________________________________
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ Claus-▇▇▇▇▇ ▇▇▇▇▇▇▇
_________________________________________ ____________________________________________
Name (Typed or Printed)
Title: General Counsel
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ Date: July 24, 2003
____________________________________________
Name (Typed or Printed)
Title: President and Chief Operating Officer
Date: July 24, 2003 By: /s/ ▇▇▇▇▇ Von Prondzynski
_________________________________________
____________________________________________
Name (Typed or Printed)
Title: Authorized Signatory
Date: July 24, 2003
ROCHE DIAGNOSTICS CORPORATION
By:/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇
_________________________________________
▇▇▇▇▇ ▇. ▇▇▇▇▇▇
____________________________________________
Name (Typed or Printed)
Title: Vice President, General Counsel and
Secretary
Date: July 24, 2003
By:
_________________________________________
____________________________________________
Name (Typed or Printed)
Date: July 24, 2003
12
JOINDER: EACH OF MESO SCALE TECHNOLOGIES, LLC., A DELAWARE LIMITED LIABILITY
COMPANY AND MESO SCALE DIAGNOSTICS, LLC., A DELAWARE LIMITED LIABILITY COMPANY
JOINS THIS ONGOING LITIGATION AGREEMENT SOLELY TO CONFIRM THAT IT AGREES TO BE
BOUND BY SECTION 3.3 AND ARTICLE 8 OF THIS AGREEMENT AS THOUGH IT WERE IGEN FOR
THIS PURPOSE.
Meso Scale Technologies, LLC. Meso Scale Diagnostics, LLC.
A Delaware Limited Liability Company A Delaware Limited Liability Company
By: /s/ ▇. ▇▇▇▇▇▇▇▇▇▇▇ By: /s/ ▇. ▇▇▇▇▇▇▇▇▇▇▇
------------------------- -----------------------
Print Name: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ Print Name: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇
Title: President and Chief Executive Officer Title: President and Chief Executive Officer
Date: July 24, 2003 Date: July 24, 2003
13
APPENDIX A
FORM OF GERMAN JOINT MOTION
14
In the matter of
IGEN INTERNATIONAL INC., ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, ▇▇▇,
- claimant -
represented by: : ▇▇▇ ▇▇▇▇ & Bird, Dusseldorf
under assistance of: PAe ▇▇▇▇▇▇▇▇ Eitle, Munchen
v e r s u s
ROCHE DIAGNOSTICS GmbH, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇,
- defendant -
- COURT FILE NO.: 4 b O 258/03 -
we appoint ourselves for the defendant.
The parties are in ongoing settlement talks.
We therefore request,
to order the stay of the proceeding according to sec. 251 (1)
German Procedural Law.
Attorney at law
15
Dusseldorf, den ..... 07.2003
In the matter of
IGEN INTERNATIONAL INC., ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, ▇▇▇,
- claimant -
represented by: : ▇▇▇ ▇▇▇▇ & Bird, Dusseldorf
under assistance of : PAe ▇▇▇▇▇▇▇▇ Eitle, Munchen
v e r s u s
ROCHE DIAGNOSTICS GmbH, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇,
- defendant -
- COURT FILE NO.: 4 b O 258/03 -
attached we file a check for deposit of the court fees and hereby request the
service of the complaint.
We ask to schedule a hearing date for this matter. The parties are in ongoing
settlement talks.
We therefore request,
to order the stay of the procedure - after established service
- according to sec. 251 (1) German Procedural Law.
For the defendants representatives will announce their appointment after service
and will themselves request the stay of the proceedings.
Attorney at law
Dusseldorf, den ..... 07.2003
16
In Sachen
IGEN INTERNATIONAL INC., ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, ▇▇▇,
- Klagerin -
Prozessbevollmachtigte: ▇▇▇ ▇▇▇▇ & Bird, Dusseldorf
Mitwirkend: PAe ▇▇▇▇▇▇▇▇ Eitle, Munchen
g e g e n
ROCHE DIAGNOSTICS GmbH, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇,
- ▇▇▇▇▇▇▇▇ -
- ▇▇.: 4 b O 258/03 -
bestellen wir uns fur die Beklagte.
Die Parteien befinden sich in Vergleichsverhandlungen.
Wir beantragen ▇▇▇▇▇,
das Ruhen des Verfahrens gemass Section 251, Satz 1 ZPO
anzuordnen.
▇▇▇▇▇▇▇▇▇▇▇▇
▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇ ..... 07.2003
In Sachen
IGEN INTERNATIONAL INC., ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, ▇▇▇,
- Klagerin -
Prozessbevollmachtigte: ▇▇▇ ▇▇▇▇ & Bird, Dusseldorf
Mitwirkend: PAe ▇▇▇▇▇▇▇▇ Eitle, Munchen
g e g e n
ROCHE DIAGNOSTICS Gmbh, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇,
- ▇▇▇▇▇▇▇▇ -
- ▇▇.: 4 b O 258/03 -
uberreichen wir anliegend einen Verrechnungsscheck uber die Gerichtsgebuhren und
bitten um Zustellung der Klageschrift.
Wir bitten von einer Terminierung abzusehen. Die Parteien befinden sich in
Vergleichsverhandlungen.
Wir beantragen ▇▇▇▇▇,
das Ruhen des Verfahrens - nach erfolgter Zustellung -
gemass ▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇ ▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇▇.
Fur die Beklagte werden sich nach Zustellung Prozessbevollmachtige bestellen
und ihrerseits das Ruhen des Verfahrens beantragen.
Rechtsanwalt
▇▇
▇▇▇▇▇▇▇▇ ▇
▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇ JOINT MOTION
19
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
SOUTHERN DIVISION
IGEN INTERNATIONAL, INC. )
)
Plaintiff, ) Civil Action No. 03-CV-02000-PJM
)
v. )
)
ROCHE DIAGNOSTICS CORP., et al. )
)
Defendants. )
)
---------------------------------------------------------
JOINT MOTION TO STAY PROCEEDINGS
Plaintiff IGEN International, Inc. ("IGEN") and Defendants Roche
Diagnostics Corp. ("RDC") and Roche Diagnostics GmbH, ("RDG") pursuant to an
agreement between the parties, jointly move for a stay of proceedings.
Since the complaint was filed on July 9, 2003, the parties have
executed a series of agreements including an Agreement and Plan of Merger dated
as of July 24, 2003 ("Merger Agreement") among IGEN, IGEN Integrated Healthcare,
LLC, Roche Holding Ltd, 66 Acquisition Corporation II (an affiliate of Roche
Holding Ltd) under which, among other things, an affiliate of RDG and RDC will
merge with and into IGEN.
Contemporaneously with the execution of the Merger Agreement, the
parties executed and delivered certain other agreements including an Ongoing
Litigation Agreement. Under that agreement, the parties agreed that it was in
their best interest, among other things, to jointly file this motion and to take
such further actions as may be reasonably necessary, appropriate, desirable, or
required in order to facilitate the court entering and maintaining the order
contemplated by this motion. Under the terms of the Ongoing Litigation
Agreement, the parties
20
agreed that the proceedings in this case, including the running of the time for
serving the complaint upon Roche Diagnostics GmbH, are to be stayed until the
earlier to occur of the termination or expiration of the Merger Agreement or
consummation of the closing of merger as contemplated by the Merger Agreement.
The parties agree that if the merger is not consummated, this stay will not
prejudice IGEN's right to seek a preliminary injunction in this proceeding and
agree that the stay shall not affect, and that Roche will not assert that the
stay has affected, IGEN's contention that Roche's alleged infringement of the
patents in suit is causing irreparable harm to IGEN.
A proposed order consistent with this motion is attached.
21
Respectfully submitted,
Dated: ____________________ _____________________________________
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇, Bar No. 03412
▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, Bar No. 15772
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Bar No. 15775
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
▇▇▇▇ ▇ ▇▇▇▇▇▇, ▇.▇.
▇▇▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇▇▇-▇▇▇▇
(▇▇▇) ▇▇▇-▇▇▇▇
Attorneys for Plaintiff IGEN
International, Inc.
Dated: ____________________ _____________________________________
[Attorney Name]
[Firm Name]
[Address]
Attorneys for Defendants Roche
Diagnostics Corp., et al.
22
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
SOUTHERN DIVISION
IGEN INTERNATIONAL, INC. )
)
Plaintiff, ) Civil Action No. 03-CV-02000-PJM
)
v. )
)
ROCHE DIAGNOSTICS CORP., et al. )
)
Defendants. )
)
---------------------------------------------
ORDER
The parties having filed a joint motion to stay proceedings to permit
settlement discussions,
IT IS HEREBY ORDERED:
1. All proceedings in this case are stayed until the earlier to
occur of: (a) the termination or expiration of merger ("Merger") contemplated by
the Agreement and Plan of Merger dated as of July 24, 2003 ("Merger Agreement")
among Roche Holding Ltd, 66 Acquisition Corporation II, IGEN International, Inc.
and IGEN Integrated Healthcare, LLC; or (b) consummation of the Merger in
accordance with the Merger Agreement.
2. The parties shall report to the court in writing on the status
of the efforts to consummate the Merger every 60 days from the date this order
is signed. If the Merger is not consummated and the stay is lifted or expires,
this stay will not prejudice IGEN's right to seek a preliminary injunction in
this proceeding. Further, the parties agree that the stay shall not affect, and
Roche shall not assert that the stay has affected, IGEN's contention that
Roche's alleged infringement of the patents in suit is causing irreparable harm
to IGEN.
23
_____________________________
For the Court
24