TM BIOSCIENCE - LUMINEX AMENDED AND RESTATED DEVELOPMENT AND SUPPLY AGREEMENT
Exhibit
4.16
TM
BIOSCIENCE - LUMINEX
AMENDED
AND RESTATED
Table
of
Contents
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ARTICLE
1 DEFINITIONS
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2
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ARTICLE
2 DEVELOPMENT AND COMMERCIALIZATION
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8
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ARTICLE
3 DISTRIBUTION AND LICENSE
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11
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ARTICLE
4 SUPPLY, PRICING AND ROYALTIES
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14
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ARTICLE
5 EXCLUSIVITY OF EFFORTS AND COMPLIANCE WITH LAWS
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20
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ARTICLE
6 MAINTENANCE, SUPPORT AND TRAINING
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21
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ARTICLE
7 REPRESENTATIONS AND WARRANTIES
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22
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ARTICLE
8 TERM AND TERMINATION
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23
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ARTICLE
9 LUMINEX TRADEMARKS
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24
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ARTICLE
10 CONFIDENTIALITY
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25
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ARTICLE
11 INDEMNIFICATIO
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26
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ARTICLE
12 MISCELLANEOUS
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28
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| EXHIBIT A SPECIFICATIONS | |
| EXHIBIT B END USER LICENSES | |
| EXHIBIT C FIELDS | |
| EXHIBIT D LUMINEX INSTRUMENT PRICING | |
| EXHIBIT E LUMINEX BEAD PRICING | |
| EXHIBIT F TRADEMARKS | |
| EXHIBIT G TRADEMARK USAGE GUIDELINES | |
| EXHIBIT H ESCROW AGREEMENT | |
| EXHIBIT I AFFILIATES OF TM |
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-1-
AMENDED
AND RESTATED
DEVELOPMENT
& SUPPLY AGREEMENT
This
Amended and Restated Development & Supply Agreement (this “Agreement”),
dated
and effective as of March 28, 2006 (the “Effective
Date”),
is
entered into by and between Luminex Corporation, a Delaware corporation with
principal offices at ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
(“Luminex”)
and TM
BIOSCIENCE CORPORATION, an Ontario corporation with principal offices at ▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇ (“TM”).
BACKGROUND
| A. |
Luminex
has developed Beads (as defined below) for detection and quantification
of
analytes either singly or in multiplexed (multiple analytes
simultaneously) form and has developed Luminex Instruments (as defined
below) for use with such Beads.
|
| B. |
The
Parties (as defined below) desire that TM develop, distribute,
manufacture, market and sell Kits (as defined below) incorporating
Tests
(as defined below) for use with certain Fields (as defined below),
and
that TM distribute Luminex Instruments for use with such Kits.
|
| C. |
The
Parties previously entered into that certain Development and Supply
Agreement dated as of March 28, 2001 and subsequently amended on
February
28, 2005, on March 31, 2005 and on January 6, 2006 (the “Prior
Agreement”),
and desire to supersede and replace the Prior Agreement in its entirety
with this Agreement.
|
NOW
THEREFORE, for and in consideration of the covenants, conditions, and
undertakings hereinafter set forth, it is agreed by and between the Parties
as
follows:
ARTICLE
1
DEFINITIONS
Unless
specifically set forth to the contrary herein, the following terms, where used
in the singular or plural, shall have the respective meanings set forth
below.
1.1 “Affiliate”
means
any entity that directly or indirectly owns, is owned by or is under common
ownership with a Party, where “owns” or “ownership” means direct or indirect
possession and/or control of at least fifty percent (50%) of the outstanding
voting securities of a corporation or a comparable equity interest in any other
type of entity, and as specficially set forth in Exhibit
I.
From
time to time during the term of this Agreement, if TM requests that Exhibit
I
shall be
expanded to include additional Affiliates, such Affiliates shall be included
on
Exhibit
I
based on
mutual written consent by the Parties.
1.2 “Agreement”
shall
have the meaning attributed to it in the first paragraph.
1.3 “Assignment
Fee”
shall
have the meaning attributed to it in Section 12.2(a).
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-2-
1.4 Beads”
means
fluorescently-dyed carboxylated microsphere beads supplied by Luminex for use
with Luminex Instruments and made available by Luminex generally to customers
for use in tests as specifically set forth in Exhibit
E.
1.5 “Bead
Specifications”
means
the specifications for the Beads set forth in Exhibit
A
attached
hereto as may be amended from time to time in accordance with Section 4.3
hereof.
1.6 “Bio-Threat
Agent Testing”
shall
have the meaning attributed to it in Section 3.8(a).
1.7 “Business
Day(s)”
shall
mean any day that the New York Stock Exchange is open and which is not a
Saturday or a Sunday.
1.8 “Calendar
Year”
means
each twelve-month (12-month) period during the term of the Agreement beginning
January 1 and ending December 31.
1.9 “Claim”
shall
have the meaning attributed to it in Section 11.1.
1.10 “Committee”
shall
have the meaning attributed to it in Section 2.5.
1.11 “Confidential
Information”
of
a
Party shall mean any and all material or information of a Party or any of its
Affiliates (the “Disclosing
Party”)
which
has or shall come into the possession or knowledge of the other Party or any
of
its Affiliates (the “Recipient
Party”)
in
connection with, or as a result of, entering into this Agreement including
information concerning the Disclosing Party’s past, present and future
customers, suppliers, technology, and business. For the purposes of this
definition, “material” and “information” include know-how, data, patents,
copyrights, trade secrets, processes, techniques, programs, designs, formulae,
marketing, advertising, financial, commercial, sales or programming materials,
written materials, compositions, drawings, diagrams, computer programs, studies,
work in progress, visual demonstrations, ideas, concepts, and other data, in
oral, written, graphic, electronic, or any other form or medium whatsoever.
Notwithstanding the foregoing, “Confidential Information” does not include the
following material or information:
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(i)
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material
or information which is in the public domain when it is received
by or
becomes known to the Recipient Party or which subsequently enters
the
public domain through no fault of the Recipient Party (but only after
it
enters the public domain);
|
|
(ii)
|
material
or information which is already known to the Recipient Party at the
time
of its disclosure to the Recipient Party by the Disclosing Party
and is
not the subject of an obligation of confidence of any
kind;
|
|
(iii)
|
material
or information which is independently developed by the Recipient
Party
without any use of or reference to the Confidential Information of
the
Disclosing Party where such independent development can be established
evidence that would be acceptable to a court of competent jurisdiction;
and
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(iv)
|
material
or information which is received by the Recipient Party in good faith
without an obligation of confidence of any kind from a third party
who the
Recipient Party has not reason to believe was not lawfully in possession
of such information free of any obligation of confidence of any kind,
but
only until the Recipient Party subsequently comes to have reason
to
believe that such information was subject to an obligation of confidence
of any kind when originally
received.
|
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-3-
1.12 “Control”
shall
mean control in any manner that results in control in fact, whether directly
through the ownership of securities or indirectly through trust, agreement,
or
arrangement, including the ownership by a single person or entity of fifty
percent (50%) or more of the securities or other ownership interest representing
the equity, the voting stock or general partnership of a Party.
1.13 “CPI”
shall
mean the annual United States Consumer Price Index published by the U.S. Bureau
of Labor Statistics.
1.14 “Delivery
Location”
shall
have the meaning attributed to it in Section 4.4.
1.15 “Disclosing
Party”
shall
have the meaning attributed to it in Section 1.11.
1.16 “Discontinued
Luminex Products”
shall
have the meaning attributed to it in Section 4.14.
1.17 “Effective
Date”
shall
mean the date of this Agreement indicated in its first paragraph.
1.18 “End
User”
shall
mean the purchaser of a Kit and/or Luminex Instrument from TM, a TM Affiliate
or
Subdistributor, where such purchase is for the purpose of generating Test
results on behalf of such purchaser or one or more third parties and not for
the
purpose of re-selling the Kit(s) and/or the Luminex Instrument.
1.19 “End
User License”
shall
mean any one of the license agreements set out in Exhibit
B,
as
applicable
1.20 “End
User Licenses and Terms and Conditions”
shall
have the meaning attributed to it in Section 3.4.
1.21 “End
User Manual”
means
the documentation that accompanies Luminex Instruments and Beads, and which
provides an End User with installation instructions and functional
specifications for each such product.
1.22 (*)
1.23 (*)
1.24 “Fields”
means
the fields set forth in Exhibit
C.
1.25 “GAAP”
shall
mean generally accepted accounting principles in the United States.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-4-
1.26 “Human
Histocompatability Testing”
shall
have the meaning attributed to it in Section 3.8(b).
1.27 “Included
Software”
shall
mean all software provided by Luminex with the Instrument that manipulates,
organizes, compiles, captures, or similarly processes data, from the point
of
data entry into the Luminex Instrument to the point of data output from the
Luminex Instrument, including digital signal processing software, data
acquisition software, instrument calibration operations software, instrument
control firmware, graphical user interface software components, and print
formatting software features. Also included in this definition of “Included
Software” is all software code exposed to TM by Luminex through any interface
and provided by Luminex with the Instrument.
1.28 “Initial
Term”
shall
have the meaning attributed to it in Section 8.1.
1.29 “Installation
Rate”
shall
have the meaning attributed to it in Section 4.6(d).
1.30 “Kit”
means
the combination of (i) Beads conjugated to biological reactants, (ii) Beads
conjugated to universal sequences, (iii) standards for use with (i) and (ii),
and (iv) other ancillary materials (e.g. buffers) intended for use with (i)
and/or (ii) and required for performance of Tests. A “Kit(s)” must contain all
of the foregoing components and must be branded by TM in accordance with Article
9 hereof.
1.31 “Kit
Royalties”
shall
have the meaning attributed to it in Section 4.6(b).
1.32 “Losses”
shall
have the meaning attributed to it in Section 11.1.
1.33 “Luminex”
shall
have the meaning attributed to it in the first paragraph.
1.34 “Luminex
Instrument”
means
a
laser-based fluorescent analytical test system consisting of Luminex’s
instrumentation and the Software, with computer components, as specifically
identified in Exhibit
D.
1.35 “Luminex
Instrument Specifications”
means
the specifications for the Luminex Instrument set forth in Exhibit
A
attached
hereto as may be amended from time to time in accordance with Section 4.3
hereof.
1.36 “Luminex
Intellectual Property Rights”
means
Patent Rights, copyrights and all other intellectual property rights that
Luminex has or acquires during the Term in connection with the Beads or the
Luminex Instruments, by way of sale, license or otherwise, but shall exclude
the
intellectual property rights licensed to Luminex under the License Agreement
between the Parties dated March 28, 2001.
1.37 “Luminex
Trademarks”
shall
have the meaning attributed to in Section 9.1(a)
and
includes, without limitation, the trademarks set out in Exhibit
F.
1.38 “Minimum
Royalty Payments”
shall
have the meaning attributed to it in Section 4.7
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-5-
1.39 “Multiplexed
Bead Assays”
means
assays comprised of fluorescently-dyed microsphere beads which simultaneously
detect one or more analytes using a single sample.
1.40 “Net
Sales”
shall
mean the total amounts invoiced by or on behalf of TM for the sale or other
commercial exploitation of a Kit to End Users, after deducting, in accordance
with GAAP, the following: (i) customs duties and taxes (e.g., sales, excise,
withholding and value -added taxes), other than taxes based on TM’s income; and
(ii) freight, insurance and other shipment expenses.
1.41 “Nonconformity”
shall
have the meaning attributed to it in Section 7.2.
1.42 “Party”
shall
mean TM or Luminex.
1.43 “Patent
Rights”
shall
mean any domestic or foreign patents and patent applications, any regional
patents, certificates of invention and utility models which have been opened
for
public inspection and all reissues, divisions, continuations,
continuations-in-part, extensions (including any extensions thereof under
applicable United States laws or foreign equivalents), supplementary protection
certificates, registrations, or re-examinations of these patents, as applicable,
which relate to Beads or Luminex Instruments and which are owned, licensed
or
otherwise acquired by Luminex during the Term.
1.44 “Prior
Agreement”
shall
have the meaning attributed to it in the background paragraph.
1.45 “Product”
shall
have the meaning attributed to it in Section 7.2.
1.46 “Proportional
Share”
shall
have the meaning attributed to it in Section 4.1(e).
1.47 “Quarter”
shall
mean a period of three (3) consecutive months of a Calendar Year starting on
January 1, April 1, July 1, or October 1.
1.48 “Recipient
Party”
shall
have the meaning attributed to it in Section 1.11.
1.49 (*)
1.50 “Software”
shall
mean the Included Software in machine executable object code format and Updates
thereto, in each case that are made available by Luminex generally to its
customers as part of the Luminex Instrument.
1.51 “Specifications”
means the Bead Specifications and the Luminex Instrument
Specifications.
1.52 “Subdistributors”
shall
have the meaning attributed to it in Section 3.7.
1.53 (*)
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-6-
1.54 “Terms
and Conditions”
shall
have the meaning attributed to it in Section 3.4.
1.55 “Territory”
shall
mean all of the countries of the world, except for Field Two for which
“Territory” shall mean only the United States, including Puerto Rico and the
U.S. Virgin Islands, and Canada.
1.56 “Test”
shall
mean the use of Beads in the detection of one or more analytes within a Field
for an application within a Field.
1.57 “third
party”
shall
mean a person or entity who or which is not a Party or an Affiliate of such
Party.
1.58 “TM”
shall
have the meaning attributed to it in the first paragraph.
1.59 “TM
Developments”
shall
have the meaning attributed to that term in Section 1.60.
1.60 “TM
Improvement Patents”
shall
mean patents claiming inventions comprising modifications, extensions or
enhancements conceived or reduced to practice by TM to the Beads and/or Luminex
Instruments or portions thereof (including Included Software) or to the
manufacture or use of the Beads and/or Luminex Instruments or portions thereof
(including, Included Software), including use of such Beads and/or Instruments
in the performance of Multiplexed Bead Assays. “TM Improvement Patents”
specifically excludes patent claims claiming any other inventions conceived
or
reduced to practice by TM consisting of methods of sample preparation, methods
of conjugating Beads to analytes, the composition of matter of the specific
chemistries of the assays developed by TM, and methods of performing the assays
(i.e., the protocol for the assays) (such excluded developments, the “TM
Developments”).
1.61 “TM
Intellectual Property”
means
TM’s patents, copyrights, trademarks, and other intellectual property rights,
including: (i) the TM Developments; (ii) the TM Improvement Patents, (iii)
the
data processed through or developed in connection with the use of the Luminex
Instrument and/or the Beads; and (iv) the TM Trademarks.
1.62 “TM
Trademarks”
shall
have the meaning attributed to it in Section 9.1(b).
1.63 “Trademark
Usage Guideline”
shall
have the meaning attributed to it in Section 9.1(a).
1.64 “Updates”
means
error corrections and bug fixes to the Software that Luminex makes available
generally to its customers free of charge.
1.65 “Warranty
Period”
shall
have the meaning attributed to it in Section 7.1.
1.66 Rules
of Interpretation.
Unless
there is something in the subject matter or context inconsistent therewith,
this
Agreement shall be interpreted as follows:
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-7-
| (i) |
all
references to a designated “Article”, “Section”, or other subdivision or
to an Exhibit are to the designated Article, Section or other subdivision
of, or Exhibit to, this Agreement;
|
| (ii) |
the
words “herein”, “hereof”, “hereunder” and other words of similar import
refer to this Agreement as a whole and not to any particular Article,
Section or other subdivision or Exhibit;
|
| (iii) |
the
provision of a Table of Contents and the division of this Agreement
into
Articles, Sections and other subdivisions are for convenient reference
only and do not affect the construction or interpretation of this
Agreement
|
| (iv) |
any
reference to gender includes all genders. Words importing the singular
number only include the plural and vice
versa;
|
| (v) |
the
word “or” is not exclusive. The words “including”, “includes” and
“include” mean “including (or includes or include) without limitation”;
and any capitalized term used in this Agreement that is not otherwise
defined herein will have the generally accepted industry or technical
meaning given to such term
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ARTICLE
2
DEVELOPMENT
AND COMMERCIALIZATION
2.1 Development,
Distribution, Marketing and other Rights.
TM and
each of its Affiliates shall have the right to develop and design (including
the
development and design of the TM Developments); and manufacture the Kits,
provided such Kits are sold subject to provisions of Article 3 herein. Without
limiting the generality of the foregoing, TM (and its Affiliates, if applicable)
shall be responsible, at its expense, for all Kit design and development
hereunder. Luminex shall have no obligation to develop any Kit or supply any
Kit
to TM.
2.2 Commercialization
within a Field.
(a) TM
shall
use commercially reasonable efforts to (i) obtain all regulatory approvals
required, if any, for the use, sales, marketing and distribution of a Kit for
use within Field Two within twelve (12) months after the Effective Date, and
(ii) sell or have sold a Kit for use within Field Two for which a royalty is
owed pursuant to Section 4.6(b) in the Territory within twelve (12) months
after
the Effective Date. Failure to meet both of the preceding conditions may result
in termination of certain rights of TM hereunder under Section 8.2.
(b) In
the
event TM’s failure to comply with the obligations under 2.2(a) above is
attributable to delay in obtaining regulatory approval for a Kit by the
applicable Regulatory Authority (but only to the extent such regulatory filing
was made within the commercialization timeframes set forth in 2.2(a) above),
TM
shall have the option to extend the time to obtain regulatory approval and
sell
or have sold a Kit for use within Field Two by the lesser of an additional
twelve (12) months or the additional time required by the applicable Regulatory
Authority to grant approval for such Kit.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-8-
2.3 Commercialization
within the Territory.
(a) TM
shall,
within the following countries, (i) obtain all regulatory approvals required,
if
any, for the use, sales, marketing and distribution of a Kit for use within
Field One and Field Two and (ii) sell or have sold a Kit for use within Field
One and Field Two for which a royalty is owed pursuant to Section 4.7
within:
(i)
twenty-four (24) months after the Effective Date in the following
countries:
(*)
Failure
to meet any of the preceding conditions may result in termination of certain
rights of TM hereunder under Section 8.3.
(b) Luminex
will cooperate with TM, at TM’s expense, to the extent Luminex’s participation
is necessary for TM to obtain regulatory approval for the Kits for use, sales,
marketing and distribution within the Field in the Territory. Luminex will
make
available to TM without charge such tangible written information in Luminex’s
possession and control as is necessary to obtain regulatory approval for the
Kits, it being understood that Luminex shall not be required to perform any
tests or studies required for regulatory approval. Notwithstanding the
foregoing, Luminex shall have no duty of cooperation with respect to its
Confidential Information unless the regulatory authority in question protects
such Confidential Information from disclosure to a degree substantially similar
to that protection provided by the United States Food & Drug
Administration.
(c) In
the
event TM’s failure to comply with the obligations under 2.3(a) above is
attributable to delay in obtaining regulatory approval for a Kit by the
applicable Regulatory Authority (but only to the extent such regulatory filing
was made within the commercialization timeframes set forth in 2.3(a) above),
TM
shall have the option to extend the time to obtain regulatory approval and
sell
or have sold a Kit by the lesser of an additional twelve (12) months or the
additional time required by the applicable Regulatory Authority to grant
approval for such Kit.
(d) Notwithstanding
the foregoing, to the extent Luminex does not offer warranty support for Luminex
Instruments pursuant to Article 7 prior to expiration of commercialization
timeframes for specific countries set forth in this Section 2.3, the
commercialization timeframes for such individual countries shall be extended
until Luminex offers warranty support in such countries. For avoidance of doubt,
the commercialization timeframes for such individual countries will not begin
until Luminex offers warranty support for Luminex Instruments pursuant to
Article 7 in such individual countries.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-9-
2.4 Progress
Reports.
TM
shall keep Luminex reasonably informed as to the progress of the activities
undertaken pursuant to this Article 2, which shall include, a minimum of three
(3) reports per Calendar Year (“Progress Reports”), which are to be submitted
within thirty (30) days following the end of the first, second and fourth
Quarter. The reports shall be in a form and contain content satisfactory to
both
Parties acting reasonably. Within sixty (60) days of the execution of the
Agreement, the parties agree to negotiate the form and content of such Progress
Reports.
2.5 Commercialization
Committee.
Following the execution of this Agreement, TM and Luminex will establish a
commercialization committee (the “Committee”)
in
accordance with the following guidelines:
(a) the
Committee will be formed by two (2) representatives of each Party;
(b) with
the
prior consent of the other Party in every case, either Party may invite other
members of its staff or consultants to be in attendance at particular meetings
of the Committee as observers;
(c) either
Party may convene a meeting of the Committee, which shall be held wherever
the
Parties shall mutually agree from time to time, including by
telephone;
(d) at
least
one (1) meeting of the Committee will be held each year between September
1st
and
November 30th
but
additional meetings will be convened whenever requested by either Party,
provided that the Committee shall not meet more frequently than quarterly;
and
(e) the
Committee’s terms of reference shall cover all matters of mutual concern with
respect to the commercialization of the Kits.
2.6 Insurance.
During
the term of this Agreement, TM shall, at its sole cost and expense, obtain
and
keep in force a policy of comprehensive general liability insurance with bodily
injury, death and property damage limits of not less than $2,000,000 per
occurrence and $5,000,000 in the aggregate. TM shall cause Luminex to be named
as an additional insured on such insurance policy. Within ninety (90) days
following the Effective Date, TM shall furnish Luminex with a certificate of
insurance evidencing the insurance required hereunder. TM will provide to
Luminex (i) at least thirty (30) days prior written notice of any cancellation,
termination or material change of such insurance coverage and (ii) prompt
written notice of the occurrence of any event that is reasonably likely to
result in a claim being made under such insurance policy.
2.7 . Outsourced
Development and/or Manufacturing.
TM shall
have the rights to outsource the development and/or manufacturing of Kits solely
to licensees of Luminex or to Luminex directly, subject to written agreement
by
such third parties of applicable terms and conditions of the Definitive
Agreement and for subsequent resale by TM solely under TM’s brand in accordance
with Article 9 hereof, within the Field(s). Prior to outsourcing development
and/or manufacturing of a Kit, TM shall provide Luminex with a right of first
offer with respect to the development and/or manufacture of such Kit. Luminex
shall have the right to submit a written offer for development and/or
manufacturing of such Kit within thirty (30) days of receipt of written notice
by TM of such opportunity. In the event Luminex fails to submit a written offer
within such thirty (30) day period or TM reasonably rejects such written offer,
TM shall have the right to outsource the development and/or manufacturing to
a
licensee of Luminex in its discretion. Notwithstanding the foregoing, TM shall
be allowed to outsource development to non-profit academic centers and/or
universities provided that TM provides Luminex prior written notice of such
event(s), including the identity and location of the entity conducting the
outsourced development.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
.-10-
ARTICLE
3
3.1 Appointment;
Covenant Not to ▇▇▇.
Subject
to the terms and conditions of this Agreement, Luminex appoints TM and each
of
its Affiliates as: (i) a distributor, developer, marketer, manufacturer, and
seller of the Kits in the Territory; and (ii) a distributor, marketer and
reseller of the Luminex Instruments in the Territory, the whole in accordance
with prices, terms and conditions determined by TM, in its discretion; provided,
however, that the Beads are sold only as part of Kits, and further provided
that
Kits are designed and sold solely for use within the Field(s) and subject to
the
End User restrictions in Section 3.4 below and provided such Luminex Instruments
and Beads are not purchased from a then-existing licensee of Luminex technology.
Subject to the terms and conditions of this Agreement, Luminex hereby covenants
to TM and each of its Affiliates that, provided that TM and its Affiliates
comply with their obligations set forth in this Agreement, Luminex shall not
commence an action for infringement of the Luminex Intellectual Property Rights
against TM, any of its Affiliates, or any End User in connection with any of
the
activities set out in Section 2.1; provided, however, that such covenant shall
not apply: (i) to the applicable End User if such End User fails to comply
with
the applicable End User License, the obligations of TM hereunder or any of
its
other obligations as set forth in its agreements with Luminex; and (ii) to
TM or
its Affiliates unless (1) Beads are sold only as part of Kits, and (2) Luminex
Instruments and Kits are designed and sold solely for use within the Fields
and
are accompanied by the End User License(s) as set forth in Section 3.4. It
is
understood and agreed that except as expressly provided in this Agreement
(including Section 2.1, 3.1, 3.4 and 3.7), no rights or licenses under Luminex’s
Intellectual Property are granted hereunder nor shall any such rights or
licenses be implied from the terms hereof. The Parties further acknowledge
and
agree that the covenant not to ▇▇▇ set forth in this Section 3.1 shall not
imply
that End Users of the Luminex Instrument obtain any rights from TM or its
Affiliates under Luminex’s Intellectual Property Rights. Rather, Luminex will
grant directly to End Users, rights under Luminex’s Patent Rights to use the
Luminex Instrument with Kits pursuant to the applicable End User License(s)
only
when such Kits are purchased by the End User.
3.2 Reservation
of Rights.
The use
by TM or any of its Affiliates of any of Luminex’s Intellectual Property Rights
is authorized only for the purposes herein set forth in this Agreement. Nothing
in this Agreement shall be deemed to restrict Luminex’s right to exploit Beads
or Luminex Instruments. Neither TM nor its customers shall receive any license
or rights under Luminex Intellectual Property Rights by virtue of their purchase
of Luminex Instruments other than as expressly set forth in this Agreement
or
any license agreement accompanying the Luminex Instrument. TM shall not remove,
alter, cover or obfuscate any patent markings, copyright notices or other
proprietary rights notices placed on or embedded in the Software or Luminex
Instruments, or the packaging and documentation related thereto. TM shall ▇▇▇▇
all Kits and Luminex Instruments sold or otherwise distributed under this
Agreement in accordance with the applicable statutes and regulations relating
to
patent marking of the United States and all other countries in which the Kits
or
Luminex Instruments are made or sold.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-11-
3.3 No
Right to Modify.
Except
to the extent specifically permitted under Section 2.1, Included Software is
licensed, and Beads and non-Software portions of the Luminex Instrument are
sold, subject in every case to the condition that such transfer does not convey
any license, expressly or by implication, to manufacture, reconstruct, modify,
duplicate or otherwise copy or reproduce any of the Beads, Included Software
or
the Luminex Instruments. TM shall not, and shall not authorize any third party
to, alter, modify, adapt, translate, prepare derivative works from, decompile,
reverse engineer, disassemble, or attempt to derive computer source code from
any Luminex Instrument, Beads or Included Software. Requests for information
necessary to achieve interoperability with the Luminex Instrument shall be
communicated promptly in writing to Luminex. Luminex shall provide such
information to TM, including such API’s as are necessary to achieve
interoperability with the Luminex Instrument. To the extent that Luminex
provides TM with access to any source code to the Software (in order to permit
TM to achieve interoperability with the Luminex Instrument or to permit TM
to
develop software modules that are intended to interface with the Software or
otherwise), such source code shall be deemed “Confidential
Information”
hereunder and TM shall return the same to Luminex promptly upon request. TM
will
notify Luminex immediately upon TM becoming aware that TM or any third party
has
engaged in any of the foregoing prohibited activities and, to the extent
permitted by law, shall cease selling Luminex Instruments, Beads and Kits to
any
such person or entity. TM further agrees that the Luminex Instrument may not
be
used by TM with microspheres other than the Beads authorized by Luminex and
Beads may not be used with third party instruments.
3.4 End
User License.
TM
shall include a copy of the applicable End User Licenses and Software license
agreements, labels and terms and conditions, a copy of which, current as of
the
Effective Date, is attached hereto as Exhibit
B
(collectively, the “End
User Licenses and Terms and Conditions”)
with
each Kit and/or Luminex Instrument, as applicable, shipped to a customer or
End
User by or for TM. Luminex shall have the right to change such End User Licenses
and Terms and Conditions on thirty (30) days advance written notice to TM,
provided, however, Luminex agrees that it will not materially change the End
User Licenses and Terms and Conditions (for purposes of this Agreement) without
TM’s prior written consent, which shall not be unreasonably withheld. After such
thirty (30) day period, TM shall be obligated to use the updated End User
License and Terms and Conditions in Luminex Instruments and the newly
manufactured batches of Kits and TM shall use commercially reasonable efforts
to
(i) make customers and End Users aware of the End User Licenses and Terms and
Conditions prior to the consummation of any sale, and (ii) effect and document
sales of Kits and Luminex Instruments in such a manner as to legally bind such
customers and End Users to the End User Licenses and Terms and
Conditions.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-12-
3.5 Grant
to Luminex.
TM
hereby grants to Luminex a nonexclusive, perpetual, worldwide, unrestricted
license, with the right to grant and authorize sublicenses, under TM Improvement
Patents, to: (i) make, have made, use, import, offer for sale and sell any
and
all products and components, (ii) exploit any and all method or process; and
(iii) otherwise exploit the TM Improvement Patents for all purposes. Each such
license shall be deemed royalty-free and fully paid-up, and shall be in effect
for the life of the applicable TM Improvement Patent. Without limiting the
provisions of this Section 3.5, Luminex agrees to work cooperatively with TM
to
restrict the use of any TM trade secrets relating to hardware or software
improvements, if any, made by TM with respect to the Luminex Instrument. Nothing
in this Agreement shall be construed to grant to Luminex any right, title,
or
interest in any TM Intellectual Property, other than the rights expressly set
forth herein.
3.6 Misuse
by End User.
TM will
promptly notify Luminex verbally, followed by prompt confirmation in writing,
upon TM becoming aware that any End User: (i) has used or intends to use a
Luminex Instrument with microspheres other than the Beads authorized by Luminex;
(ii) has altered, modified, adapted, translated, prepared a derivative work
from, decompiled, reverse engineered, disassembled or attempted to derive
computer source code from any Luminex Instrument, with a view to Luminex
considering and, if thought fit, enforcing any of the Luminex Intellectual
Property Rights. If Luminex determines that any third party has engaged in
the
foregoing activities, if requested by Luminex in writing, TM shall cease selling
Luminex Instruments and Kits to such third party.
3.7 Subdistributors.
Subject
to all the terms and conditions herein, TM may appoint third parties within
TM’s
normal chain of distribution to sell Kits and Luminex Instruments in accordance
with the provisions of this Article 3 (such subdistributors referred to
collectively herein as “Subdistributors”);
provided, that TM shall (i) take such action as shall be reasonably necessary
to
advise each such Subdistributor of TM’s confidentiality and intellectual
property obligations under this Agreement, (ii) use reasonable commercial
efforts to include in any agreement or contract with such Subdistributors terms
substantially commensurate with the restrictions and obligations of TM hereunder
and a provision expressly making Luminex a third-party beneficiary of such
agreement or contract, (iii) be liable for any breach by such Subdistributors
of
this Agreement (as if such Subdistributors were parties to this Agreement),
for
any violation of applicable laws or regulations by such Subdistributors and
for
any improper use, infringement or misappropriation of Luminex’s intellectual
property by such Subdistributors, and (iv) indemnify and hold Luminex harmless
from and against any claims, causes of action, costs, losses or liabilities
incurred by Luminex as a result of any such breach, violation, improper use,
infringement or misappropriation. Except as expressly provided in this Section
3.7
and
Section 12.5, TM shall have no right to assign or sublicense its rights or
appoint subdistributors hereunder.
3.8 Field
Exclusions.
For
avoidance of doubt, the Field(s) do not include testing for human papillomavirus
(HPV) testing, bio-threat agent testing, veterinarian and production animal
testing, Human Histocompatability Testing (as defined below), crop protection
and crop safety testing, food production and food safety testing, environmental
testing, MicroRNA (▇▇▇▇▇) analysis and Commercial Blood Transfusion Product
Testing (as defined below). For avoidance of doubt:
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-13-
(a) bio-threat
agent testing (i) includes, but is not limited to, government or private
enterprise bio-threat screening for pathogens and/or toxins that may be involved
in bio-terrorism activity (“Bio-Threat
Agent Testing”),
and
(ii) does not include clinical diagnosis and epidemiological surveillance within
the Fields;
(b) “Human
Histocompatability Testing”
is
the
Field of human histocompatability testing which includes the detection and
measurement of HLA (human leukocyte antigen) cellular antigens, serum based
antibodies to HLA antigens, soluble HLA antigens, and nucleic acids related
to
such antigens; and
(c) “Commercial
Blood Transfusion Product Testing”
means
blood screening for infectious agents related to blood processing for
transfusion or industrial purposes.
3.9 No
Right to Distribute Beads and Luminex Instruments to licensees of
Luminex.
TM
shall not have the right to sell and/or distribute raw and/or unconjugated
Beads
(unless incorporated into Kits). TM shall not have the right to sell and/or
distribute Luminex Instruments to any licensee of Luminex.
ARTICLE
4
SUPPLY,
PRICING AND ROYALTIES
4.1 Supply
and Use of Beads and Luminex Instruments.
(a)
Subject to the terms and conditions of this Agreement, TM agrees to purchase
from Luminex, and Luminex agrees to use reasonable, diligent efforts to supply
to TM, TM’s requirements of Beads and Luminex Instruments. To ensure the quality
and authenticity of the Beads, TM shall exclusively obtain fluorescently-dyed
microsphere Beads for use with Luminex Instruments from Luminex and only use
the
Beads with Luminex Instruments, unless otherwise agreed in writing by Luminex.
TM further agrees that it will not sell or distribute Beads to any third party
that TM knows intends to use the Beads other than with the Luminex Instrument.
TM agrees to take reasonable steps to notify its employees of its obligations
hereunder.
(b)
TM
shall provide in writing to Luminex at least thirty (30) days prior to the
end
of each Quarter a rolling forecast by Quarter of quantities, if any, of (a)
TM’s
anticipated requirements of Beads and/or Luminex Instruments for each Quarter
for the subsequent five (5) Quarters. The term “Quarter”
shall
mean a period of three consecutive months of a Calendar Year starting on January
1, April 1, July 1, or October 1. Such forecast shall not create a binding
obligation on the part of either Luminex or TM, except as specified below.
(c)
The
first Quarter in any given rolling forecast shall constitute a firm purchase
order, binding on both Parties and the second Quarter shall constitute a firm
order for at least seventy-five percent (75%) of the applicable Quarter’s order.
TM shall evidence all purchase orders by issuing to Luminex a purchase order
in
accordance with Section 4.2. All orders shall be binding on both Parties
provided that TM’s order for a given Quarter does not exceed 150% of the
quantity ordered in the previous Quarter, or if an order exceeds 150% of the
quantity ordered in the preceding Quarter, TM places a firm order at least
one
hundred eighty (180) calendar days prior to the date specified for
delivery.
Notwithstanding
the foregoing, if orders for Beads and/or Luminex Instruments submitted by
TM
for a specific quarter are greater than fifty percent (50%) of the quantity
of
Beads and/or Luminex Instruments forecasted by TM for the same quarter, then
Luminex shall have the right to reject such orders in its
discretion.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-14-
(d)
The
last three (3) Quarters of any rolling forecast shall not be binding on either
Party, unless accompanied by a firm order, but shall be used only for planning
purposes and safety stock building.
(*)
4.2 Orders.
TM’s
orders for Luminex Instruments and Beads shall be made pursuant to a written
purchase order, and shall provide for shipment in accordance with Luminex’s
standard lead times then in effect. ANY ADDITIONAL OR INCONSISTENT TERMS OR
CONDITIONS OF ANY PURCHASE ORDER, ACKNOWLEDGMENT, INVOICE, PACKING SLIP OR
SIMILAR STANDARDIZED FORM GIVEN OR RECEIVED PURSUANT TO THIS AGREEMENT SHALL
HAVE NO EFFECT AND SUCH TERMS AND CONDITIONS ARE HEREBY EXCLUDED. FOR THE
AVOIDANCE OF DOUBT, SUCH TERMS SHALL BE EXCLUDED NOTWITHSTANDING THE FACT THAT
ANY SUCH PURCHASE ORDER, ACKNOWLEDGEMENT, INVOICE, PACKING SLIP OR SIMILAR
STANDARDIZED FORM MAY (1) HAVE COME INTO EXISTENCE AFTER THE EFFECTIVE DATE
OF
THIS AGREEMENT, OR (2) CONTAIN AN “INTEGRATION CLAUSE” OR SIMILAR LANGUAGE
INDICATING THAT SUCH DOCUMENT SUPERCEDES AND/OR AMENDS ALL PRIOR DOCUMENTS
AND
AGREEMENTS.
4.3 Specifications.
The
Parties may from time to time amend the Bead Specifications or the Luminex
Instrument Specifications by mutual written agreement without the necessity
of
amending this Agreement. Such amended Specifications shall then be deemed the
Specifications applicable under this Agreement.
4.4 Delivery.
With
respect to exact shipping dates, Luminex shall use its reasonable efforts to
ship to TM quantities of Beads and Luminex Instruments in accordance with
purchase orders submitted pursuant to Section 4.2 and subject to the provisions
of Section 4.1 above. All Beads and Luminex Instruments supplied pursuant to
the
terms of this Agreement shall be suitably packed for shipment by Luminex and
marked for shipment to the facility indicated in the TM purchase order
(“Delivery
Location”).
All
shipments of Beads and Luminex Instruments will be shipped F.O.B (U.C.C.) the
shipping point designated by Luminex. The carrier shall be selected by agreement
between Luminex and TM, provided that in the event no such agreement is reached,
Luminex shall select the carrier. All reasonable shipping and insurance costs,
as well as any special packaging expenses, shall be paid by TM.
4.5 Acceptance.
All
shipments and all shipping and other charges shall be deemed correct and
accepted unless Luminex receives from TM, no later than fifteen (15) days after
TM’s receipt of a given shipment, a written notice specifying the shipment, the
purchase order number, and the nature of the discrepancy between the order
and
the shipment or the nature of the discrepancy in the shipping or other charges,
as applicable. Luminex agrees to replace, at no additional expense to TM, any
Beads or Luminex Instruments, which fail to conform in any material respect
to
the Bead Specifications or Luminex Instrument Specifications, respectively.
Luminex may analyze any Beads or Luminex Instruments rejected by TM for
nonconformity and if it is objectively established that the Beads or Luminex
Instruments were conforming to and performing in accordance with and the Bead
Specifications or Luminex Instrument Specifications, respectively, then TM
shall
be responsible for payment for such Beads or Luminex Instruments. TM shall,
at
Luminex’s option, return to Luminex or destroy, and provide written
certification of destruction, all Beads that do not conform to the Bead
Specifications, and TM shall return to Luminex all Luminex Instruments that
do
not conform to the Luminex Instrument Specifications. All returns shall be
in
accordance with Luminex’s written instructions and shall be at Luminex’s expense
if the Luminex Instrument and/or Beads are confirmed by Luminex not to conform
to and perform in accordance with the Bead Specifications or Luminex Instrument
Specifications as applicable.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-15-
Should
Luminex’s analysis fail to confirm the Beads and/or Luminex Instruments
non-conformance, and should the Parties fail to otherwise resolve the dispute,
the Parties shall submit the Beads and/or Luminex Instrument, or a
representative sample thereof, along with a reference batch which has previously
been shown by Luminex to conform to the respective Specifications, to a mutually
acceptable independent laboratory and mutually agreeable interrogatories to
be
answered by such laboratory. The determination of the Beads and/or Luminex
Instruments conformance or non-conformance to the Specifications by such
independent laboratory shall be binding upon the Parties. Should the laboratory
determine that the Beads and/or Luminex Instruments is conforming, TM shall
pay
all independent laboratory costs, as well as the agreed to price for Luminex
Instruments and list price for Beads, and should such laboratory confirm that
the Beads and/or Luminex Instruments is non-conforming, Luminex shall pay all
independent laboratory costs and shipping costs and replace the Beads and/or
Luminex Instruments with products that conform to the respective Specifications.
4.6 Pricing
and Royalties.
(a)
Bead
Pricing.
TM
shall pay Luminex for Beads at the prices set forth in Exhibit
E
(the
“Bead Prices”) for all Beads purchased by TM. In addition:
(i) Luminex
may not increase the Bead Prices without TM’s prior written consent within the
first two (2) years after the Effective Date; and
(ii) following
the first two (2) years after the Effective Date, Luminex may increase the
Bead
Prices in its discretion upon written notice to TM by an aggregate annual
increase equal to the annual calendar percentage change in the CPI plus two
percent (2%) for each year throughout the remainder of the Term.
Notwithstanding
the foregoing, Luminex may increase the Bead Pricing at any time to the extent
of an increase in material costs or other production or manufacturing cost
increase that can be substantiated by Luminex, but such increase in Bead Pricing
shall not be more than such actual substantiated increase in Bead Pricing.
Any
such changes in the Bead Pricing shall be effective for all Beads ordered after
notice is provided by Luminex.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-16-
(b)
Kit
Royalties.
TM
shall pay to Luminex (*)
of Net
Sales (“Kit Royalties”).
(c)
Luminex
Instrument Pricing.
TM
shall pay Luminex for Luminex Instruments at the prices set forth in
Exhibit
D.
Following the execution of the Agreement, the parties agree to negotiate upon
mutually acceptable terms and conditions a purchase volume-based discount for
Luminex Instrument prices.
(d)
Installation
of Luminex Instrument.
Upon at
least thirty (30) days prior written notice from TM, Luminex and/or a Luminex
certified third party will perform on-site installation of Luminex Instruments
at TM and/or End User locations. Beginning as of the date of execution hereof
and for as long as this Agreement remains effective and as long as Luminex
continues to perform installations of Luminex Instruments at End User locations,
TM shall pay Luminex for such installations at a rate of (*)
per
installation in accordance with payment terms set forth in Section 4.16 below
(“Installation
Rate”).
In
addition:
(i) Luminex
may not increase the Installation Rate without TM’s prior written consent within
the first two years after the Effective Date; and
(ii) following
the first two years after the Effective Date, Luminex may increase the
Installation Rate in its discretion upon written notice to TM by an aggregate
annual increase equal to the annual calendar percentage change in the CPI plus
two (2) percent for each year throughout the remainder of the Term. Any such
increase in the Installation Rate shall be effective for all installations
ordered after expiration of the thirty (30) day notice period referenced in
this
Section.
(iii) Notwithstanding
the foregoing, Luminex may increase the Installation Rate at any time to the
extent of an increase in costs; provided that Luminex provides objective
confirmation of such increases. Any such changes in the Installation Rate shall
be effective for all installations ordered after notice is provided by Luminex.
4.7 Minimum
Royalty Payments.
TM
agrees that it shall pay to Luminex the following minimum royalty payments
each
calendar year set forth below following the Effective Date (“Minimum
Royalty Payments”):
| Minimum Royalty Payments (per Calendar Year): | |
| 2006: |
(*)
|
| 2007: |
(*)
|
| 2008: |
(*)
|
| 2009: |
(*)
|
| 2010: |
(*)
|
| 2011: |
(*)
|
|
2012
and each Calendar Year
thereafter:
|
(*)
|
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-17-
For
the
avoidance of doubt, each annual period above is a Calendar Year.
All
such
Minimum Royalty Payments shall be due no later than thirty (30) days following
the end of each annual period described in this Section 4.7. For avoidance
of
doubt, TM shall be permitted to pay Luminex the difference between actual
Royalties paid in a particular year and the Minimum Royalty Payments set forth
above but in no event shall such payment be greater than (*) of the Minimum
Royalty Payment due in any annual period as set forth above. All payments
hereunder shall be payable in U.S. Dollars (U.S.$) without deductions for taxes,
fees or charges of any kind except as contemplated in Section 4.11.
In the
event TM fails to make payments hereunder equal to or in excess of the Minimum
Royalty Payments set forth above for any annual period, Luminex shall be
permitted to terminate this Agreement unless TM pays such amount within thirty
(30) days. The
Parties agree that TM shall be obligated to pay the amounts set forth in Section
4.8, even if Luminex terminates this Agreement pursuant to Section 8.3 or
Section 8.4 below, except to the extent such termination is caused by a breach
by Luminex.
4.8 Pricing
of Products.
TM may
sell the Kits and Luminex Instruments to End Users who purchase other products
and services of TM, and as result, a conflict of interest may arise. TM agrees
that TM shall not (a) discount the Kits and/or Luminex Instruments or any
portion thereof in order to achieve higher sales of, or a higher sales price
or
margin for, another product or service of TM to a greater degree than TM
generally discounts the price of other products or services of TM to a third
party; or (b) price, discount, bundle, market, promote or distribute Kits and
Luminex Instruments in comparison with such other products or services marketed
by TM.
4.9 Invoice.
Luminex
shall submit an invoice to TM upon shipment of Beads or Luminex Instruments
ordered by TM hereunder. All invoices shall be sent to principal address of
TM
set forth above, or such other addresses as specified in the purchase order
therefore, and each such invoice shall state the amounts due for Beads or
Luminex Instruments in a given shipment, plus any reasonable amounts for
insurance, taxes or other costs incident to the purchase or shipment initially
paid by Luminex but to be borne by TM hereunder.
4.10 Reporting
and Payment.
Payment
of the amounts due for Bead and Luminex Instrument purchases shall be made
within thirty (30) days of TM’s receipt of an invoice therefor. Payment of the
Kit Royalties shall be made within twenty (20) days after the end of each
Quarter, and shall be accompanied by a written report stating the Net Sales
of
Kits generated in the prior Quarter, the total Kit Royalties due and all
supporting data and calculations used by TM to compute Kit Royalties. In
addition, TM shall provide Luminex with a quarterly report of estimated Net
Sales within fifteen (15) days after the end of each Quarter; provided, however,
that the failure to provide any such report shall not be deemed to be a breach
of this Agreement. All payments hereunder shall be made in U.S. Dollars in
the
United States by direct bank transfer to an account designated in Luminex’s
invoice, check or other form of payment acceptable to and approved in advance
by
Luminex. In the event that TM is unable to make such payments in the United
States, due solely to its inability to export funds from a country of the
Territory, TM shall notify Luminex immediately, and if so instructed by Luminex,
deposit all monies due Luminex in an account of Luminex in a local bank of
Luminex’s choice within such country. Any late payments shall bear interest at
the rate of one percent (1.0%) per month or the highest rate permitted under
applicable law, which ever is less, based on the number of days
overdue.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-18-
4.11 Taxes.
(a) Any
and
all amounts payable hereunder do not include any government taxes (including
sales, use, excise, and value added taxes) or duties imposed by any governmental
agency that are applicable to the export, import, or purchase of the Beads
or
the Luminex Instruments (other than taxes on the net income of Luminex), and
TM
shall bear all such taxes and duties. When Luminex has the legal obligation
to
collect and/or pay such taxes, the appropriate amount shall be added to, and
separately stated on, TM’s invoice and paid by TM, unless TM provides Luminex
with a valid tax exemption certificate authorized by the appropriate taxing
authority.
(b) All
payments by TM specified hereunder are expressed as net amounts and shall be
made free and clear of, and without reduction for, any withholding taxes. Any
such taxes, which are otherwise imposed on payments to Luminex shall be the
sole
responsibility of TM. TM shall provide Luminex with official receipts issued
by
the appropriate taxing authority or such other evidence as is reasonably
requested by Luminex to establish that such taxes have been paid. TM shall
submit proof to Luminex of payment of the withholding taxes within a reasonable
period of time. TM shall use commercially reasonable efforts consistent with
its
usual business practices to ensure that any withholding taxes imposed are
reduced as much as possible under the provisions of the current or any future
taxation treaties or agreements between foreign countries, and Luminex shall
reasonably cooperate with such efforts.
4.12 Currency
Conversion.
If any
currency conversion shall be required in connection with the calculation of
amounts payable under this Agreement, such conversion shall be made using the
selling exchange rate for conversion of the foreign currency into U.S. Dollars,
quoted for current transactions reported by The
Wall Street Journal
(New
York Edition) for the last Business Day of the calendar month to which such
payment pertains.
4.13 Records;
Inspection.
TM
shall keep complete, true and accurate books of accounts and records for the
purpose of determining the amounts payable under this Article 4 for at
least three (3) years following the end of the Quarter to which they pertain.
Such books and records will be open for inspection during such three (3) year
period by an independent auditor, chosen by Luminex and reasonably acceptable
to
TM, at TM’s site for the purpose of verifying the amounts payable by TM under
this Article 4 and verifying compliance with Section 2.1. Such on-site
inspections may be made no more than once each calendar year, at reasonable
times and on reasonable notice, except that in the event of a noncompliance,
additional quarterly inspections may be made until the noncompliance has been
fully remediated. Inspections conducted under this Section 4.16 shall be at
the
expense of Luminex, unless a variation or error producing an underpayment in
amounts payable exceeding three percent (3%) of the amount paid for the period
covered by the inspection is established in the course of any such inspection,
whereupon all reasonable fees and costs relating to the inspection for such
period and any unpaid amounts that are discovered shall be paid by TM, together
with interest as specified in Section 4.13. The Parties will endeavor to
minimize disruption of TM’s normal business activities to the extent reasonably
practicable.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-19-
4.14 Luminex
Product Life Cycle Management.
In the
event that Luminex decides to discontinue production of any Luminex Instruments
and/or Beads, as set forth in Exhibit
D
and
Exhibit
E
("Discontinued
Luminex Products")
Luminex shall provide TM with:
(a) in
connection with the discontinuation of a Luminex Instrument where such
discontinuation would not impact any of TM’s FDA approvals, at least six (6)
months written notice prior to the later of (i) the end of sale date and (ii)
the last day the discontinued Luminex Instrument can be ordered;
(b) in
connection with the discontinuation of a Luminex Instrument where such
discontinuation would impact any of TM’s FDA approvals, at least nine (9) months
written notice prior to the later of (i) the end of sale date and (ii) the
last
day the discontinued Luminex Instrument can be ordered;
(c) in
connection with the discontinuation of Luminex Beads where such discontinuation
would not impact any of TM’s FDA approvals, at least nine (9) months written
notice prior to the later of (i) the end of sale date and (ii) the last day
the
affected Beads can be ordered;
(d) in
connection with the discontinuation of Luminex Beads where such discontinuation
would impact any of TM’s FDA approvals, at least twelve (12) months written
notice prior to the later of (i) the end of sale date and (ii) the last day
the
affected Beads can be ordered;
(e) the
ability to make a final purchase of such Discontinued Luminex Products at the
end of the applicable notice period before Luminex ceases production of such
Discontinued Luminex Products, provided that TM must take delivery of all such
Discontinued Luminex Products within ninety (90) days of the date of the final
purchase order unless an extension is agreed to in writing by Luminex. Such
final purchase shall not be subject to any of the quantity restrictions
described in Section 4.1 or otherwise
contained herein; and
(f) Luminex
shall continue to (i) supply field service spare parts and service support
for a
discontinued Luminex Instrument for a period of five (5) years from the
effective date of discontinuance and (ii) provide technical support assistance
for a period of five (5) years from the effective date of discontinuance for
a
Luminex Instrument.
ARTICLE
5
EXCLUSIVITY
OF EFFORTS AND COMPLIANCE WITH LAWS
5.1 Exclusivity
of Efforts.
To
avoid conflicts of interest, TM and its Affiliates will not manufacture, market,
sell or otherwise distribute any materials, technologies or products, other
than
Luminex Instruments and Kits that are used in performing multiplexed bead
assays. For
avoidance of doubt, this Section 5.1
shall
not prohibit TM from engaging in development activities, including contingency
planning, with materials, technologies and products that are not Luminex
Instruments and/or Beads for evaluation purposes only.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-20-
5.2 Compliance
with Laws.
TM
shall
prepare and distribute Kits and Luminex Instruments in accordance with all
federal, local, and foreign laws and regulations pertaining thereto and shall
be
responsible for securing and maintaining required regulatory approvals at TM’s
expense. TM shall be responsible for complying with all directives, laws, rules
and regulations relating to the performance of its obligations and exercise
of
TM’s rights hereunder, including regulatory reporting regulations. Luminex shall
be responsible for complying with all directives, laws, rules and regulations
relating to the performance of its obligations and exercise of Luminex’s rights
hereunder, including any recalls of Luminex Instruments. Each Party shall
reasonably co-operate with the other Party in connection with the foregoing.
TM
agrees to cooperate with Luminex, including providing required documentation,
in
order to obtain export licenses or exemptions therefrom for the Luminex
Instrument. TM warrants that it will comply with applicable laws and regulations
governing imports and exports in effect from time to time. TM shall be
responsible for maintaining records of and responding to all complaints
regarding the Luminex Instrument and Kits. TM shall provide Luminex with written
notice of all complaints related to Luminex Instrument.
ARTICLE
6
MAINTENANCE,
SUPPORT AND TRAINING
6.1 Maintenance
and Support.
Luminex
and/or a Luminex certified third party will provide front line support and
maintenance for Luminex Instruments to End Users during the Warranty Period.
Following the expiration of such Warranty Period, Luminex and/or a Luminex
certified third party shall provide support and maintenance for End Users that
execute Luminex’s standard maintenance agreement. In the event that an End User
does not execute Luminex’s standard maintenance agreement, TM may execute such
standard maintenance agreement on behalf of such End User. TM shall be
exclusively responsible for providing all maintenance and technical support
required for the Kits.
6.2 Training.
At TM’s
request or an End User’s request, Luminex will provide either (i) an
instructor-led then current introductory training course in use of the Luminex
Instrument to End User purchasers of the Luminex Instrument, including lunch
and
study materials, at Luminex’s facilities in Austin, Texas or (ii) comparable
internet-based introductory training courses in the use of the Luminex
Instrument. Such training shall only be provided by Luminex within three (3)
months of installation of each Luminex Instrument at an End User’s site. TM
shall be solely responsible for all lodging and travel expenses of End Users.
For each Luminex Instrument purchased, such training course will be provided
free of charge to one individual. The cost for each additional person attending
the training will be Luminex’s standard charge for such training. Additional
training courses may be offered by Luminex to TM or End Users under mutually
agreed upon terms and conditions by the Parties.
6.3 Additional
Training Courses.
At TM’s
request, Luminex shall, at its sole discretion, provide additional training
courses to TM, its Affiliates, its subsidiaries, its Subdistributors, other
third parties and End User purchasers of the Luminex Instrument.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-21-
ARTICLE
7
REPRESENTATIONS
AND WARRANTIES
7.1 Limited
Product Warranty.
Luminex
warrants to TM and each of its Affiliates that until the earlier of (a) one
(1)
year from delivery to an End User, or fifteen (15) months from delivery to
TM
(the “Warranty
Period”),
the
Beads and Luminex Instrument (each a “Product”)
will
conform to and perform in accordance with the Bead Specifications and the
Luminex Instrument Specifications, subject to use in accordance with
documentation provided by Luminex that accompanies such Product or as authorized
by Luminex under this Agreement or otherwise, including but not limited to
the
instructions-for-use. This warranty will not apply in the event that the failure
of the Product to conform to and perform in accordance with the applicable
specifications (a “Nonconformity”)
was
caused by unusual physical or electrical stress, misuse, neglect, improper
alteration, improper installation, unauthorized repair or improper testing
by a
person other than Luminex or its authorized agents, representatives or
subcontractors. The warranty provided herein specifically excludes any software
or hardware not provided by or on behalf of Luminex. Subject to Article 11
and
Luminex’s warranty return policies for Products set forth in Section 7.2,
Luminex’s sole liability and TM’s exclusive remedy for breach of the foregoing
warranty, shall be, at Luminex’s option, repair or replacement of the Product
with a Product that conforms with the Bead Specifications or Luminex Instrument
Specifications, as applicable.
7.2 Warranty
Return Policies.
In the
event that a Product contains a Nonconformity, during the Warranty Period:
(i)
TM shall notify Luminex in a timely manner (after becoming aware of the same)
in
writing that such Product contained a Nonconformity and shall furnish a detailed
explanation of any alleged Nonconformity; and (ii) at Luminex’s option and
election, TM shall return such nonconforming Product to Luminex F.O.B. (U.C.C.)
Luminex’s manufacturing facility (subject to the following sentence) or destroy
such nonconforming Product and provide Luminex with written certification of
such destruction. The cost of shipping and handling will be reimbursed by
Luminex where the Product is determined to have had a Nonconformity. Except
as
expressly provided in this Section 7.2, TM shall not have the right to return
a
nonconforming Product to Luminex without Luminex’s prior written consent.
7.3 No
Contrary Representations.
TM
agrees not to represent the Beads or Luminex Instrument in a manner that is
inconsistent with the Bead Specifications and Luminex Instrument Specifications,
respectively, or otherwise misrepresent the Beads or Luminex
Instrument.
7.4 Exclusivity
of Warranty.
EXCEPT
AS EXPRESSLY PROVIDED IN HEREIN, LUMINEX MAKES NO WARRANTIES OR CONDITIONS
(EXPRESS, IMPLIED, STATUTORY OR OTHERWISE) WITH RESPECT TO THE SUBJECT MATTER
HEREOF, AND LUMINEX SPECIFICALLY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES OR
CONDITIONS OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-22-
ARTICLE
8
TERM
AND TERMINATION
8.1 Term.
The
term of this Agreement shall commence on the Effective Date and continue in
full
force and effect for a period of seven (7) years after the Effective Date of
this Agreement, unless earlier terminated in accordance with this Article 8
(“Initial
Term”).
This
Agreement shall be automatically extended for additional one (1) year terms
up
to three (3) renewal terms unless either Party notifies the other Party in
writing of its intent not to extend the term of this Agreement, such
notification to be provided no less than ninety (90) days prior to the end
of
the then current term of this Agreement. Subject to the foregoing, as a
condition to any renewal term, TM must have satisfied the Minimum Annual Royalty
Payments (*)
during
the previous Calendar Year. Upon expiration, the Parties may agree in writing
to
renew this Agreement, which shall include, at a minimum, new Minimum Royalty
Payments.
8.2 Termination
for Failure to Commercialize
a Kit
within a Field.
If TM
fails to meet all the terms and conditions of Section 2.2 regarding
commercialization in Field Two, then Luminex, at its sole discretion, may
terminate the license to Field Two by providing TM with sixty (60) days prior
written notice of its intent to terminate. The license to Field Two granted
herein shall terminate upon the expiration of such sixty (60) day notice period
unless TM complies with Section 2.2 during such termination notice
period.
8.3 Termination
for Failure to Commercialize within the Territory.
If TM
fails to meet any of the terms and conditions of Section 2.3
regarding commercialization of a Kit within a Field in the specified countries,
then Luminex, at its sole discretion, may terminate the grant for such Field
within the country or countries in which TM failed to meet the Section
2.3
conditions by providing TM sixty (60) days prior written notice of its intent
to
terminate, The license to the applicable Field in the applicable country or
countries granted herein shall terminate upon the expiration of such sixty
(60)
day notice period unless TM complies with the commercialization obligations
with
respect to the applicable Field and country (or countries) during such
termination notice period.
8.4 Termination
for Breach.
This
Agreement may be terminated by either Party by written notice of
termination:
(a) effective
immediately (i) if the other Party breaches any of the following provisions
of
this Agreement and fails to remedy the breach within sixty (60) days after
being
given written notice thereof stating the non-breaching Party’s intent to
terminate: Article 2, Article 3, Section 4.10, 5.2,
7.3,
Article
9 and Article 10;
(b) following
a good faith attempt to settle the dispute in accordance with Section
12.16,
if the
other Party breaches any material term or condition of this Agreement other
than
those specified in the preceding paragraph and fails to remedy the breach within
sixty (60) days after being given written notice thereof stating the
non-breaching Party’s intent to terminate, provided, however, that termination
under this Section 8.4 shall not relieve TM of its payment obligations under
this Agreement, except to the extent such failure is caused by a breach by
Luminex.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-23-
8.5 Effect
of Termination.
In the
event of termination of this Agreement, TM may at TM’s option (i) sell
Luminex Instruments and Kits existing in its inventory and Kits that in the
process of being manufactured as of the effective date of termination of this
Agreement (provided that the applicable Kit Royalties are paid to Luminex)
or
(ii) in the event of a termination not caused by TM’s breach, return to Luminex
unsold Luminex Instruments existing in TM’s inventory as of the effective date
of termination of this Agreement for a refund of the purchase price less a
re-stocking fee of twenty percent (20%) therefore; provided, that such Luminex
Instruments have not been contained in TM’s inventory for more than one (1) year
prior to the return date.
8.6 Return
of Materials.
Within
thirty (30) days after the effective date of termination of this Agreement,
each
Party shall at the other Party’s option destroy the other Party’s Confidential
Information in its possession, and provide written certification of such
destruction, or prepare such Confidential Information for shipment to Luminex
or
its designee, as such Party may direct, at such Party’s expense. Neither Party
shall make or retain any copies of any Luminex Confidential Information which
may have been entrusted to it except for one (1) archival copy which shall
be
securely stored and as to which each Party’s confidentiality obligations under
Article 10 shall continue in full force and effect.
8.7 Survival.
It is
understood that termination of this Agreement shall not relieve a Party from
any
liability which, at the time of such termination, has already accrued to the
other Party. The provisions of Article 1 (to the extent referenced in the
following sections), Article 3, and Sections 4.1, 4.2,
4.3,
4.4,
4.5,
4.8, 4.9, 4.10, 4.11 shall survive during the period during which TM has a
continuing right to sell Kits and/or Luminex Systems pursuant to Section 8.5
after expiration or termination of this Agreement. In addition, the following
provisions shall survive any expiration or termination of this Agreement:
Articles 5, 7, 10, 11 and 12, and Sections 3.2, 3.5, 4.11, 4.13, 8.5, 8.6 and
8.7. Except as otherwise expressly provided in this Article 8, all other rights
and obligations of the Parties shall terminate upon termination of this
Agreement.
ARTICLE
9
LUMINEX
TRADEMARKS
9.1 Trademarks.
(a) Subject
to the provisions of this Article 9, during the term of this Agreement, TM
shall
have the right to advertise the Beads and Luminex Instrument under the
trademarks, marks, and trade names of Luminex set forth in Exhibit
F,
as same
may be amended in writing by Luminex from time to time (“Luminex’s
Trademarks”).
TM
shall not modify Luminex’s branding of Luminex Instruments. TM shall fully
comply with the restrictions set forth below and Luminex’s Trademark Usage
Guidelines attached hereto as Exhibit
G
concerning the use of Luminex’s Trademarks (“Trademark
Usage Guidelines”).
Luminex shall have the right to change such Trademark Usage Guidelines on thirty
(30) days advance written notice to TM. After such thirty (30) day period,
TM
shall be obligated to use the updated End User License and Terms and Conditions
in Luminex Instruments and the newly manufactured batches of Kits. All
representations of Luminex’s Trademarks that TM intends to use shall first be
submitted to Luminex for confirmation that such use would comply with Luminex’s
trademark usage guidelines (which confirmation shall be deemed given if Luminex
does not respond within sixty (60) Business Days of such submission) of design,
color and other details, or shall be exact copies of those used by Luminex.
Luminex may modify any Luminex Trademarks, or substitute an alternative ▇▇▇▇
for
any Luminex Trademark, upon sixty (60) days prior notice to TM.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-24-
(b) Notwithstanding
the foregoing: (i) TM and its Affiliates may brand the Kits with their
trademarks (the “TM
Trademarks”);
and
(ii) TM and its Affiliates may co-brand the Luminex Instruments with the TM
Trademarks and with the Luminex Trademarks. For avoidance of doubt, all Kits
developed and/or manufactured by TM shall be solely branded by TM and shall
not
include a brand of any third party with the exception of Luminex.
(c) TM
agrees
that each Kit’s packaging shall contain a notice describing Luminex’s rights in
and to the Beads;
(d) Luminex
acknowledges and agrees that as part of any co-branding of the Luminex
Instruments, the TM Trademarks on the Luminex Instruments shall be in accordance
with the Trademark Usage Guidelines in Exhibit
G.
9.2
Use.
TM
shall not alter or remove any of Luminex’s Trademarks affixed to or otherwise
contained on or within the Luminex Instruments or the packaging or documentation
therefore. All uses of Luminex’s Trademarks will inure solely to Luminex, TM
shall obtain no rights with respect to any of Luminex’s Trademarks, other than
as expressly set forth herein, and TM irrevocably assigns to Luminex all such
right, title and interest, if any, in any of Luminex’s Trademarks. At no time
during or after the term of this Agreement may TM challenge or assist others
to
challenge Luminex’s Trademarks (except to the extent expressly required by
applicable law) or the registration thereof or attempt to register any
trademarks, marks or trade names confusingly similar to Luminex’s Trademarks.
Luminex and TM shall enter into registered user agreements with respect to
the
Luminex’s Trademarks pursuant to applicable trademark law requirements
worldwide.
ARTICLE
10
CONFIDENTIALITY
10.1 Non-Disclosure.
Each
Party shall (a) keep completely confidential and will not publish or
otherwise disclose the Confidential Information of the other Party (except
to
its Affiliates, employees, agents or consultants having a need to know) and
(b) shall not use such Confidential Information except as expressly
permitted under the terms of this Agreement or otherwise authorized in writing
by the Disclosing Party. Without limiting the foregoing, each Party will use
at
least the same standard of care as it uses to protect its own proprietary or
confidential information to ensure that its Affiliates, employees, agents and
consultants do not disclose or make unauthorized use of the Confidential
Information, but in no event less than reasonable care. All Confidential
Information shall be subject to this Article 10 for a period of three (3) years
from the date of disclosure by the Disclosing Party. The terms and conditions
of
this Agreement shall be considered Confidential Information.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-25-
10.2 Publicity.
Each
Party shall obtain the prior written consent of the other Party prior to making
any press release regarding the relationship set forth in this Agreement,
including any future product developments. Once a Party has obtained the other
Party’s written consent to issue any press release or other public disclosure,
the Party may subsequently release or issue such approved information without
the need to obtain additional approval from the other Party for each such
subsequent use. Notwithstanding the foregoing, Luminex or TM shall be permitted
to disclose any details regarding this relationship to the extent required
by
law.
10.3 Filing
of Agreement.
In the
event that a Party is required by applicable law or regulation, or the terms
of
any listing agreement to file this Agreement with any governmental agency or
in
any other public forum, such Party shall use its best efforts to redact from
such filing the economic terms contained in this Agreement and such other terms
as the other Party may reasonably request.
10.4 Exceptions.
Notwithstanding Section 10.1, neither Party shall have liability to the
other with regard to any Confidential Information that it discloses due to
a
legal requirement provided, that the Recipient Party shall provide reasonable
advance notice to enable the Disclosing Party to seek a protective order or
otherwise prevent such disclosure.
ARTICLE
11
INDEMNIFICATION
11.1 Luminex
Indemnity.
Subject
to the requirements of this Section 11.1 and Section 11.2, Luminex shall defend
and/or settle, indemnify and hold harmless TM, its Affiliates or any of their
respective officers, directors, shareholders, employees, agents or contractors
from all costs, expenses and damages (including reasonable attorneys’ fees,
legal expenses and court costs) (collectively, the “Losses”)
resulting from or in connection with any claim, complaint, suit, allegation,
proceeding or cause of action (each a “Claim”)
by a
third party for infringement of any third party intellectual property right
(including copyright, trademark, or patent) by the Luminex Instruments or Beads,
as delivered by Luminex hereunder; or as modified by Luminex or its authorized
agents, representatives or subcontractors (including TM) (provided, in the
case
of such agents, representative and subcontractors only if the modifications
were
expressly authorized by Luminex). Luminex shall pay all Losses finally awarded
against TM, its Affiliates or any of their respective officers, directors,
shareholders, employees, agents or contractors, resulting from a settlement,
or
otherwise incurred in connection with the Claim (whether or not a final
settlement is rendered or a judgment or award is granted and whether or not
TM
or any of its officers, directors, shareholders, employees, agents or
contractors is named party to the Claim). Notwithstanding the provisions of
this
Section 11.1, Luminex will not have any obligation under this Article 11 to
the
extent a Claim for infringement is based upon and is attributed to: (i) a
Luminex Instrument that was modified by TM, its Affiliates or a third party
other than Luminex or its authorized agents, representatives or subcontractors;
(ii) modifications to the Luminex Instrument or any portion thereof by a third
party other than Luminex, its agents, representatives or subcontractors
(provided, in the case of such agents, representatives, and subcontractors
that
the modifications were expressly authorized by Luminex) if such infringement
would have been avoided by use of the Luminex Instrument as provided by Luminex;
(iii) use of the Luminex Instrument or any portion thereof by TM in applications
or for purposes other than for which the same was authorized by Luminex or
intended within the Fields; or (iv) completed products or equipment or any
assembly, combination, method or process in which the Luminex Instrument and
Beads are used by TM, to the extent the infringement would not have resulted
if
the Luminex Instrument were used alone. In respect of any Claim for which TM
seeks indemnification hereunder, TM shall: (i) promptly notify Luminex of such
Claim, (ii) provide Luminex with sole control over the defense and/or settlement
thereof and (iii) at Luminex’s request and expense, provide full relevant
information (subject to any of TM’s confidentiality obligations) and reasonable
assistance to Luminex with respect to such Claims.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-26-
11.2 Alternatives.
If the
Beads or Luminex Instruments or any portion thereof are or in Luminex’s
reasonable judgment may become, the subject of any Claim of infringement of
third party intellectual property rights, or if a court determines that the
Beads or Luminex Instruments or any portion thereof infringes any third party
intellectual property rights, Luminex, at its option and expense, may: (i)
procure for TM the right under such third party intellectual property rights
to
use the Beads or Luminex Instruments in accordance with the terms and conditions
of this Agreement, (ii) replace the infringing portion of the Luminex
Instruments or Beads so replaced, (iii) modify the Luminex Instrument or Beads
to make the same noninfringing without impairing its functionality or (iv)
in
the event that (i), (ii) or (iii) are not commercially practicable in Luminex’s
judgment, require that TM remove the Luminex Instruments and/or Beads or any
portion thereof from use, in which event Luminex may terminate this Agreement
by
written notice to TM; provided, however, that Luminex repays TM any
out-of-pocket costs incurred by TM in connection with the manufacture by TM
of
any Kits completed or under manufacture by TM and in its possession as of the
effective date of such termination. The exercise by Luminex of its rights under
this Section 11.2 shall not relieve Luminex of its obligations to indemnify
TM
under Section 11.1 or 11.4 for any Claims brought by third parties prior to
the
exercise of such rights.
11.3 TM
Indemnity.
Subject
to the provisions of this Section 11.3, TM hereby agrees to defend and/or settle
any and all Claims brought against Luminex and pay any Losses with respect
to
such Claims to the extent that they resulted from TM’s manufacture, development,
use, misuse, handling, storage, sale or other disposition of Tests or Kits.
Without limiting the generality of the foregoing, TM shall not be obligated
to
provide such indemnification to the extent the Claims result from a failure
of a
Luminex Instrument (as delivered to TM or as modified by Luminex or any of
its
authorized representatives, agents or authorized subcontractors) to meet the
Luminex Instrument Specifications or of a Bead to meet the Bead Specifications
from any act or omission of Luminex or any of its agents, representatives or
authorized subcontractors. In respect of any Claim for which Luminex seeks
indemnification hereunder, Luminex shall: (i) promptly notify TM of such Claim;
(ii) provide TM with sole control over the defense and/or settlement thereof;
and (iii) at TM’s request and expense, provide full information and reasonable
assistance to TM with respect to such Claims.
11.4 (*)
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-27-
ARTICLE
12
12.1 Force
Majeure.
Except
in connection with payment obligations, neither Party shall be held liable
or
responsible to the other Party nor be deemed to have defaulted under or breached
the Agreement for failure or delay in fulfilling or performing any term of
the
Agreement during the period of time when such failure or delay is caused by
or
results from causes beyond the reasonable control of the affected Party
including, but not limited to, fire, flood, embargo, war, acts of war (whether
war may be declared or not), insurrection, riot, civil commotion, strike,
lockout or other labor disturbance, act of God or act, omission or delay in
acting by any governmental authority or the other Party. The affected Party
shall notify the other Party of such force majeure circumstances as soon as
reasonably practicable
12.2 Assignment.
(a) TM’s
rights and obligations under this Agreement may not be assigned or otherwise
transferred to a third party, including any change of control of TM, without
the
prior written consent of Luminex, which may be provided in Luminex’s sole
discretion, except that TM shall be permitted to assign this Agreement to an
Affiliate as a result of an internal reorganization upon written notice to
Luminex. Luminex may assign or otherwise transfer its rights and obligations
under this Agreement without TM’s prior consent in the event of a change of
control of Luminex, or the sale of substantially all of the assets related
hereto. Any assignment or any attempted assignment by either Party in violation
of this Section 12.3 shall be null and void. Subject to the foregoing, this
Agreement shall be binding upon and inure to the benefit of the Parties hereto,
their successors and assigns. In the event that Luminex grants written
permission to TM for TM to assign or transfer the rights and obligations under
a
definitive agreement to a third party, (*)
(“Assignment
Fee”),
provided that TM shall not be obligated to pay such Assignment Fee in the event
TM assigns this Agreement to an Affiliate as a result of an internal
reorganization.
(b) The
restrictions in Section 12.2(a)
shall
not apply in the context of an assignment (i) of the licenses granted herein
if
the assignee already has a pre-existing license with Luminex to Field
One.
12.3 Notices.
Any
notice or report required or permitted to be given or made under this Agreement
by either Party shall be in writing and delivered by certified mail or by
confirmed facsimile to the other Party at its address indicated below (or to
such other address as a Party may specify by notice hereunder).
| If to Luminex: |
Luminex
Corporation
▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇
Attention:
General Counsel
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
|
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-28-
| If to TM: |
TM
Bioscience Corporation
▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇
Attention:
▇▇▇▇▇▇ Bridge-CookFax:
(▇▇▇) ▇▇▇-▇▇▇▇
|
12.4 Limitation
of Liability.
(a) Except
as
otherwise expressly provided herein, Luminex’s liability arising out of this
Agreement and/or the sale of Beads, Luminex Instruments or portions thereof
shall be limited to the aggregate amounts paid by TM to Luminex for the Beads
and Luminex Instruments under this Agreement. IN NO EVENT SHALL EITHER PARTY
BE
LIABLE TO THE OTHER PARTY OR ANY OTHER PERSON FOR ANY SPECIAL, CONSEQUENTIAL,
EXEMPLARY OR INCIDENTAL DAMAGES (INCLUDING LOST OR ANTICIPATED REVENUES OR
PROFITS RELATING TO THE SAME), ARISING FROM OR RELATING TO THIS AGREEMENT OR
THE
SUBJECT MATTER HEREOF, WHETHER BASED IN CONTRACT, TORT (INCLUDING NEGLIGENCE
OR
STRICT LIABILITY) OR OTHERWISE, AND EVEN IF SUCH PARTY IS ADVISED OF THE
POSSIBILITY OR LIKELIHOOD OF SAME. THE LIMITATIONS IN THIS SECTION 12.4 SHALL
APPLY NOTWITHSTANDING ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY
PROVIDED HEREIN. NOTWITHSTANDING THE FOREGOING, THE LIMITATION SHALL NOT APPLY
TO (I) ANY DAMAGES THAT MAY RESULT FROM THE INFRINGEMENT OR MISAPPROPRIATION
OF
ANY PATENT, COPYRIGHT, TRADEMARK, TRADE SECRET OR OTHER INTELLECTUAL PROPERTY
RIGHT; (II) ANY DAMAGES THAT MAY RESULT FROM THE BREACH OF ARTICLE 9; OR (III)
LIABILITY ARISING UNDER SECTION 11.3 HEREUNDER.
(b) Upon
Termination.
In the
event of termination by either Party in accordance with any of the provisions
of
this Agreement, neither Party shall be liable to the other, because of such
termination, for compensation, reimbursement or damages on account of the loss
of prospective profits or anticipated sales or on account of expenditures,
inventory, investments, leases or commitments in connection with the business
or
goodwill of Luminex or TM. Termination shall not, however, relieve either Party
of obligations or liabilities incurred prior to the termination, including
damages suffered by a Party as a result of a breach of this Agreement by the
other Party.
12.5 Foreign
Corrupt Practices Act.
In
conformity with the United States Foreign Corrupt Practices Act and with
Luminex’s established corporate policies regarding foreign business practices,
TM and its employees and agents shall not directly or indirectly make any offer,
payment, or promise to pay; authorize payment; nor offer a gift, promise to
give, or authorize the giving of anything of value for the purpose of
influencing any act or decision of an official of any foreign government or
the
United States Government (including a decision not to act) or inducing such
a
person to use his or her influence to affect any such governmental act or
decision in order to assist Luminex in obtaining, retaining or directing any
such business.
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-29-
12.6 Export
Control.
TM
further understands and acknowledges that Luminex is subject to regulation
by
agencies of the United States, including, but not limited to, the U.S.
Department of Commerce, which prohibit export or diversion of certain products
and technology to certain countries. Any and all obligations of Luminex to
provide the Beads or Luminex Instrument, as well as any other technical
information or assistance shall be subject in all respects to such laws and
regulations as shall from time to time govern the license and delivery of
technology and products abroad by persons subject to the jurisdiction of the
United States, including the U.S. Export Administration Act of 1979, as amended,
any successor legislation, and the Export Administration Regulations issued
by
the U.S. Department of Commerce, Bureau of Export Administration. TM agrees
to
cooperate with Luminex, including providing required documentation, in order
to
obtain export licenses or exemptions therefrom. TM warrants that it will comply
with the U.S. Export Administration Regulations and other laws and regulations
governing exports in effect from time to time. TM further agrees not to provide
Kits, Beads or Luminex Instruments to any organization, public or private,
which
engages in the research or production of military devices, armaments, or any
instruments of warfare, including biological, chemical and nuclear warfare.
12.7 Headings.
Headings included herein are for convenience only, do not form a part of this
Agreement and shall not be used in any way to construe or interpret this
Agreement.
12.8 Non-Waiver.
Any
waiver of the terms and conditions hereof must be explicitly in writing. The
waiver by either of the Parties of any breach of any provision hereof by the
other shall not be construed to be a waiver of any succeeding breach of such
provision or a waiver of the provision itself.
12.9 Severability.
Should
any section, or portion thereof, of this Agreement be held invalid by reason
of
any law, statute or regulation existing now or in the future in any jurisdiction
by any court of competent authority or by a legally enforceable directive of
any
governmental body, such section or portion thereof shall be validly reformed
so
as to reflect the intent of the Parties as nearly as possible and, if
unreformable, shall be deemed divisible and deleted with respect to such
jurisdiction, but the Agreement shall not otherwise be affected.
12.10 Advice
of Counsel.
TM and
Luminex have each consulted counsel of their choice regarding this Agreement,
and each acknowledges and agrees that this Agreement shall not be deemed to
have
been drafted by one Party or another and will be construed
accordingly.
12.11 Further
Assurances.
At any
time or from time to time on and after the date of this Agreement, either Party
shall at the request of the other Party: (i) deliver to Luminex such records,
data or other documents consistent with the provisions of this Agreement, (ii)
execute, and deliver or cause to be delivered, all such consents, documents
or
further instruments of transfer or license, and (iii) take or cause to be taken
all such actions, as the other Party may reasonably deem necessary or desirable
in order for it to obtain the full benefits of this Agreement and the
transactions contemplated hereby.
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-30-
12.12 Independent
Contractors.
The
relationship of TM and Luminex established by this Agreement is that of
independent contractors. Nothing in this Agreement shall be construed to create
any other relationship between TM and Luminex. Neither Party shall have any
right, power or authority to assume, create or incur any expense, liability
or
obligation, express or implied, on behalf of the other.
12.13 Entire
Agreement.
The
terms and provisions contained in the Agreement, including the Schedules hereto,
constitute the entire agreement between the Parties and shall supersede all
previous communications, representations, agreements or understandings, either
oral or written, between the Parties. The Parties agree that the terms and
conditions of this Agreement shall prevail, notwithstanding contrary or
additional terms, in any purchase order, End User License, Terms and Conditions,
sales acknowledgment, invoice, packing slip, confirmation or any other document
issued by either Party affecting the sale of Beads or Luminex Instruments.
No
agreement or understanding varying or extending this Agreement shall be binding
upon either Party hereto, unless set forth in a writing which specifically
refers to the Agreement signed by duly authorized officers or representatives
of
the respective Parties, and the provisions hereof not specifically amended
thereby shall remain in full force and effect.
12.14 Representations
and Warranties.
The
parties represent and warrant to one another, that as of the Effective
Date:
(i)
this
Agreement has been duly executed and delivered by it and constitutes legal,
valid and binding obligations enforceable against it in accordance with its
terms;
(ii)
no
approval, authorization, consent or other order or action of or filing with
any
court, administrative agency or other governmental authority is required for
the
execution and delivery by it of this Agreement or the consummation by it of
the
transactions contemplated hereby;
(iii)
it
has full corporate power and authority to execute and deliver this Agreement
and
to consummate the transactions contemplated hereby. All corporate acts and
other
proceedings required to be taken to authorize such execution, delivery, and
consummation have been duly and properly taken and obtained.
12.15 Counterparts.
This
Agreement may be executed in counterparts, each of which shall be deemed an
original, but which together shall constitute one and the same
instrument
12.16 Applicable
Law and Dispute Resolution.
(a) This
Agreement shall be governed by and construed in accordance with the laws of
the
State of New York, U.S.A. without reference to any rules of conflict of laws.
(b) The
Parties expressly exclude the application of the United Nations Convention
for
the International Sale of Goods.
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-31-
(i) (c)
If
the Parties are unable to settle the matter between themselves within forty-five
(45) days (other than a dispute regarding Confidential Information or Patent
Rights), either Party may initiate meditation upon written notice to the other
Party. If the Parties have not reached a settlement within forty-five (45)
days
of the initiation of the meditation, then either Party may initiate legal action
or request dispute resolution, both in its discretion.
12.17 TM
Responsibility for Affiliates.
TM
shall be responsible for ensuring that its Affiliates comply with all terms
and
conditions of this Agreement and shall defend, indemnify and hold harmless
Luminex, its Affiliates and their respective officers, directors, shareholders,
agents and employees against any and all Losses arising or resulting from any
material breach by any Affiliate of any such term or condition.
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-32-
IN
WITNESS WHEREOF, the Parties hereto have caused their duly authorized
representatives to execute this Agreement.
| TM BIOSCIENCE CORPORATION | LUMINEX CORPORATION | |
| By: _______________________________ | By: _______________________________ | |
| Name: | Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ | |
| Title: | Title: Vice President, Business Development | |
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-33-
SPECIFICATIONS
BEAD
SPECIFICATIONS
LUMINEX
INSTRUMENT CARBOXYLATED MULTI-ANALYTE MICROSPHERE
Description
Medium purified
water + 0.01% Merthiolate
Polymer polystyrene,
crosslinked
Fluorochromes
varying
concentrations of internally incorporated proprietary fluorochromes
Density 1.05
g/ml
Mean
Diameter 5.6
µm
Surface
Functional
Group
-COOH
Specification
|
General
|
|||
|
Appearance
|
Homogenous
suspension or settled layer with clear solution
|
||
|
Concentration
|
12.5E+6
+
12%
|
||
|
Physical
|
|||
|
Mean
Diameter/Size
|
5.6
µm -+
0.2 µm
|
||
|
Diameter
CV
|
<5%
|
||
LUMINEX
200 SYSTEM SPECIFICATIONS
Optics
Reporter
laser: 532nm, nominal output 10-15 mW, maximum £
500 mW,
frequency doubled diode; mode of operation, continuous wave (CW)
Classification
laser: 635 nm, 9.1 mW ±
6%
nominal, maximum output 25mW, diode; mode of operation, continuous wave
(CW)
Reporter
detector: Photomultiplier tube, detection bandwidth of 565- 585 nm
Classification
detector: Avalanche photo diode with temperature compensation
Doublet
discrimination detector: Avalanche photo diode with temperature
compensation
Fluorescence
Wavelengths
Reporter
1 (RP1): 575nm
Bandwidth
20nm
Optical
Design Elements
Avalanche
photodiodes in red and infrared
PMT
for
best sensitivity in RP1 wavelengths
Square
quartz cuvette
Outside
-
2mm x 2mm
Inside
-
200µm x 200µm
DSP
based
waveform analysis for maximum sensitivity
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-34-
Fluidics
20µl
to
200µl sample uptake volume via sample loop
Integral
pneumatic Z axis
Fixed
sample injection rate on syringe pump: 60 µl/min
Sample
core: 15-20 µm core @ 60 µL/min default
Sheath
flow rate: 90 µl/sec±5
On-board
sheath fluid pressure pump
External
sheath/waste containers
96
Well Microtiter Plates
Compatible
with standard plates no thicker than 0.75 inches (19mm)
Electrical
LX200
Power: 100 - 120 V~ ±10%, and 200-240 V~ ±10%, 1.4 Amps, 47-63 Hz
XY
Platform Power: 100-240 V~ ±10%,, 1.8 Amps, 47-63 Hz
SDS
Power: 100-240 V~ ±10%,, 1.4 Amps, 47-63 Hz
Communications
Interface (Luminex XY Platform)
RS-232
Software
Features
Microsoft®
Windows® XP Pro SP2 operating system
Real-time
data acquisition and display
Instrument
calibration and control
Data
Export to CSV or FCS 2.0
Controller
Hardware
Personal
computer with 17” flat panel monitor
41
cm (W)
x 43 cm (D) x 53 cm (H) (approx.)
16
inches
(W) x 17 inches (D) x 21 inches (H) (approx.)
PC
Power:
115 - 230 V~, 5.0/2.5 Amps, 50-60Hz
Monitor
Power: 100 - 240 V~, 2 Amps, 50-60Hz
Instrumentation
Physical Dimensions
LX200:
43
cm (W)
x 50.5 cm (D) x 24.5 cm (H)
17
inches
(W) x 20 inches (D) x 9.5 inches (H)
Weight:
25 kg (60 lbs.)
XYP:
44
cm (W)
x 60 cm (D) x 8 cm (H) (approx.)
17.25”
(W) x 23.5” (D) x 3” (H) (approx.)
Weight:
15 kg (33 lbs.)
SDS:
20
cm (w)
x 30 cm (D) x 24.75 cm (H)
8”
(W)
x
11.75” (D) x 9.75” (H)
Weight:
9
kg (20 lbs.)
Operating
Environment
Operating
temperature 15°C to 30°C (59° to 86° F),
Humidity:
20% - 80% relative humidity non condensing
Altitude:
up to 2400 m (7874 ft) above mean sea level.
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-35-
EXHIBIT
B
END
USER LICENSES
Label/Sticker
for Luminex Instrument:
By
opening the packaging containing this unit of Luminex instrumentation or using
this unit of Luminex Instrument in any manner, you are consenting and agreeing
to be bound by the following terms and conditions and the terms and conditions
set forth in the End User License Agreement for the Luminex software included
with this unit. You are also agreeing that all such terms and conditions
constitute a legally valid and binding contract that is enforceable against
you.
If you do not agree to all of such terms and conditions, you must promptly
return this unit of Luminex instrumentation for a full refund prior to using
it
in any manner.
No
rights
or licenses under any of Luminex Corporation's ("Luminex") patents are granted
by or shall be implied from the sale of this unit of Luminex Instrument or
license of Luminex software to you, the purchaser, and you do not receive any
right under Luminex's patent rights by virtue of your purchase of Luminex
Instrument or license of Luminex software. You agree that the Luminex Instrument
and Luminex software are sold only for use with fluorescently labeled
microsphere beads authorized by Luminex and you may obtain a royalty-free
license under Luminex’s patents, if any, to use this unit of Luminex Instrument
with fluorescently labeled microsphere beads authorized by Luminex by purchasing
beads authorized by Luminex and registering this unit of Luminex Instrument
with
Luminex dealer, in accordance with the instructions accompanying the Luminex
Instrument. You agree not to reverse engineer the Luminex Instrument or any
such
beads.
Label
License/Sticker for Kit:
By
opening the packaging containing this Kit (which contains fluorescently labeled
microsphere beads authorized by Luminex Corporation) or using this Kit in any
manner, you are consenting and agreeing to be bound by the following terms
and
conditions. You are also agreeing that the following terms and conditions
constitute a legally valid and binding contract that is enforceable against
you.
If you do not agree to all of the terms and conditions set forth below, you
must
promptly return this Kit for a full refund prior to using it in any
manner.
You,
the
customer, acquire the right under Luminex Corporation's patent rights, if any,
to use this Kit or any portion of this Kit, including without limitation the
microsphere beads contained herein, only with Luminex Corporation’s laser based
fluorescent analytical test instrumentation marketed under the name Luminex
Instrument.
License
Agreement for Luminex Instrument Software:
By
opening the packaging containing a unit of Luminex Instrument or using such
unit
in any manner, you are consenting and agreeing to be bound by the terms and
conditions set forth in the following End-User License Agreement (▇▇▇▇). You
are
also agreeing that the ▇▇▇▇ constitutes a legally valid and binding contract
that is enforceable against you. If you do not agree to all of the terms and
conditions in the ▇▇▇▇, you must promptly return the related unit of Luminex
Instrument for a full refund prior to using it in any
manner.
(*)
this
text has been omitted pursuant to a request for confidential treatment and
has
been filed separately.
This
document contains confidential information and cannot be shared in any format
with any third party without the express written permission of Luminex
Corporation.
-36-
End-User
License Agreement (▇▇▇▇) for Luminex® Software
This
Luminex End-User License Agreement (“▇▇▇▇”) is a legal agreement between you
(either an individual or a single entity, also referred herein as “you”) the
end-user and Luminex Corporation (“Luminex”) regarding the use of the Luminex
software product provided to you above, which includes computer software and
online or electronic documentation and may include associated media and printed
materials (if any) (“SOFTWARE PRODUCT” or “SOFTWARE”).
The
SOFTWARE PRODUCT is protected by copyright laws and international copyright
treaties, as well as other intellectual property laws and treaties. The SOFTWARE
PRODUCT is licensed, not sold.
| 1. |
GRANT
OF LICENSE. Subject to the terms and conditions of this ▇▇▇▇, Luminex
hereby grants to you a nonexclusive, nontransferable, nonassignable
license (without right to sublicense) under Luminex’s copyrights and trade
secrets to use the SOFTWARE PRODUCT on a hardware platform purchased
from
Luminex pursuant to Luminex’s terms and conditions of sale. You may make
one (1) copy of the SOFTWARE PRODUCT for backup or archival purposes
only.
Although no rights or licenses under any of Luminex's patents are
granted
by or shall be implied from the license of the SOFTWARE or the sale
of
Luminex instrumentation to you, the purchaser, you may obtain a license
under Luminex’s patents, if any, to use this unit of Luminex
instrumentation with fluorescently labeled microsphere beads autho-rized
by Luminex by purchasing such beads from Luminex or an authorized
Luminex
reseller.
|
|
2.
|
RESTRICTIONS.
|
| · |
You
must maintain all proprietary notices on all copies of the SOFTWARE
PRODUCT.
|
| · |
You
may not distribute copies of the SOFTWARE PRODUCT to third
parties.
|
| · |
You
may not reverse-engineer, decompile, disassemble, or otherwise attempt
to
derive source code from the SOFTWARE
PRODUCT.
|
| · |
You
may not copy (other than one backup or archival copy), distribute,
sublicense, rent, lease, transfer or grant any rights in or to all
or any
portion of the SOFTWARE PRODUCT.
|
| · |
You
must comply with all applicable laws regarding the use of the SOFTWARE
PRODUCT.
|
| · |
You
may not modify or prepare derivative works of the SOFTWARE
PRODUCT.
|
| · |
You
may not use the SOFTWARE PRODUCT in a computer-based service business
or
publicly display visual output of the SOFTWARE
PRODUCT.
|
| · |
You
may not transmit the SOFTWARE PRODUCT over a network, by telephone,
or
electroni-cally by any means.
|
| 3. |
TERM
AND TERMINATION. Your rights under this ▇▇▇▇ are effective until
termination. You may terminate this ▇▇▇▇ at any time by destroying
the
SOFTWARE PRODUCT, including all computer programs and documentation,
and
erasing any copies residing on your computer equipment. Luminex may
terminate this ▇▇▇▇ upon thirty (30) days written notice to you.
Your
rights under this ▇▇▇▇ automatically terminate without further action
on
the part of Luminex if you do not comply with any of the terms or
conditions of this ▇▇▇▇. Upon any termination of this ▇▇▇▇, you agree
to
destroy the SOFTWARE PRODUCT and erase any copies residing on your
computer equipment.
|
|
4.
|
RIGHTS
IN SOFTWARE. All rights and title in and to the SOFTWARE PRODUCT
and any
copies thereof are owned by Luminex or its suppliers. This ▇▇▇▇ is
not a
sale and does not transfer to you any title or ownership interest
in or to
the SOFTWARE or any patent, copyright, trade secret, trade name,
trademark
or other intellectual property right therein. You shall not remove,
alter,
or obscure any propri-etary notices contained on or within the SOFTWARE
and shall reproduce such notices on any back-up copy of the SOFTWARE.
All
title and intellectual property rights in and to the content which
may be
accessed through use of the SOFTWARE PRODUCT is the property of the
respective content owner and may be protected by applicable copyright
or
other intellectual property laws and treaties. This ▇▇▇▇ grants you
no
rights to use such content.
|
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-37-
5. EXPORT
RESTRICTIONS. You agree that you will not export or re-export the SOFTWARE
PRODUCT to any country, person, entity, or end-user subject to U.S.A. export
restrictions. You hereby warrant no state or federal agency has suspended,
revoked, or denied your export privileges.
|
6.
|
NO
WARRANTY. THE SOFTWARE PRODUCT IS LICENSED “AS IS.” ANY USE OF THE
SOFTWARE PRODUCT IS AT YOUR OWN RISK. THE SOFTWARE PRODUCT IS PROVIDED
FOR
USE ONLY WITH LUMINEX PRODUCTS. TO THE MAXIMUM EXTENT PERMITTED BY
APPLICABLE LAW, LUMINEX AND ITS SUPPLIERS DISCLAIM ALL WARRANTIES,
EITHER
EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, IMPLIED WARRANTIES
OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
NONINFRINGEMENT.
|
|
7.
|
LIMITATION
OF LIABILITY. IN NO EVENT SHALL LUMINEX OR ITS SUPPLIERS BE LIABLE
FOR ANY
SPECIAL, INCIDENTAL, INDIRECT, OR CONSEQUENTIAL DAMAGES WHATSOEVER
(INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF BUSINESS PROFITS,
BUSINESS INTERRUPTION, LOSS OF BUSINESS INFORMATION, OR ANY OTHER
PECUNIARY LOSS) ARIS-ING OUT OF THE USE OF OR INABILITY TO USE THE
SOFTWARE PRODUCT, EVEN IF LUMINEX HAS BEEN ADVISED OF THE POSSIBILITY
OF
SUCH DAMAGES.
|
MISCELLANEOUS.
This ▇▇▇▇ is governed by the laws of the State of Texas, U.S.A., without
reference to conflicts of laws principles. You shall not assign or sublicense
or
otherwise transfer the rights or license granted hereunder, by agreement or
by
operation of law, without the prior written consent of Luminex, and all
assignments in violation of this prohibition shall be null and void. This ▇▇▇▇
is the complete and exclusive agreement of Luminex and you and supersedes all
other communications, oral or written, relating to the subject matter hereof.
No
change to this ▇▇▇▇ shall be valid unless in writing and signed by the party
against whom enforcement is sought. The waiver or failure of Luminex or you
to
exercise in any respect any right or rights provided for herein shall not be
deemed a waiver of any further right hereunder. If any provision of this ▇▇▇▇
is
held unenforceable, the remainder of this ▇▇▇▇ will continue in full force
and
effect.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-38-
EXHIBIT
C
FIELDS
(*)
(*)
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in
any format
with any third party without the express written permission of Luminex
Corporation.
-39-
EXHIBIT
D
LUMINEX
INSTRUMENT PRICING
| Part Number | Description | Price |
| LX200-IS2.3WB | Luminex 200 IS 2.3 Total System -
with
Developers Workbench,
(includes
Luminex 200/IS Reader
and
Luminex XYP Plate Handler,
Luminex
SD, Dell Computer
System
and Monitor and
applicable
accessories)
|
(*) |
*At
such
time as TM provides written notification to Luminex of its agreement to
transition its purchases of Instruments entirely and solely to the Luminex
200
System (LX-200-IS2.3WB), this price will be (*).
Notwithstanding
the foregoing, Luminex may increase the price of the Luminex Instrument at
any
time to the extent of an increase in material costs or other production or
manufacturing cost increases that can be substantiated by Luminex. Any such
changes in the price of the Luminex Instrument shall be effective for all
Luminex Instruments ordered after notice is provided by Luminex.
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-40-
EXHIBIT
E
LUMINEX
BEAD PRICING
|
CARBOXYLATED
BEADS
|
Concentration
(Beads
per mL)
|
Volume
(mL)
|
Total
Beads
|
Price
|
|
12,500,000
|
1
|
12,500,000
|
(*)
|
|
|
12,500,000
|
4
|
50,000,000
|
(*)
|
|
|
12,500,000
|
16
|
200,000,000
|
(*)
|
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-41-
EXHIBIT
F
TRADEMARKS
Flowmetrix®
Luminex®
Lumavidin®
LabMAP®
xMAP®
Luminex®
100TM
Luminex®
100TM
IS
Luminex®
200TM
Suspension
Array
TM
Luminex®
XYPTM
Luminex®
SDTM
Luminex®
HTSTM
Luminex®
FlexMAPTM
Luminex®
SeroMAPTM
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-42-
EXHIBIT
G
TRADEMARK
USAGE GUIDELINES
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-43-
EXHIBIT
H
(*)
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-44-
EXHIBIT
I
AFFILIATES
OF TM
Name
of Affilate State
of Incorporation
Tm
Technologies, Inc. Delaware
Tm
Bioscience, Inc. Delaware
Tm
Bioscience HG Inc. Ontario
Tm
Bioscience PGX Inc. Ontario
(*)
this
text has been omitted pursuant to a request for confidential treatment
and has
been filed separately.
This
document contains confidential information and cannot be shared in any
format
with any third party without the express written permission of Luminex
Corporation.
-45-