AMENDED AND RESTATED DEVELOPMENT/MASTER AGREEMENT
Exhibit 10.50
AMENDED AND RESTATED DEVELOPMENT/MASTER AGREEMENT
This Amended and Restated Development/Master Agreement is made this 26th day of
February, 2010 by and between Receptors LLC, a Minnesota limited liability company (“Receptors”),
and PositiveID Corporation (formerly known as VeriChip Corporation), a corporation organized and
existing under the laws of Delaware (“PositiveID”), in order to amend and restate the
Development/Master Agreement, dated October 6, 2009, by and between Receptors and PositiveID (the
“Original Agreement”). Receptors and PositiveID shall be referred to individually as a “Party” and
collectively as the “Parties.”
WHEREAS, PositiveID desires to obtain the services (the “Development Services”) of Receptors
to, on a commercially reasonable best efforts basis, develop a glucose sensing device for use in
the human body and in animals, as described in Exhibit A attached hereto (the “Products”), and
Receptors desires to provide such Development Services to PositiveID and to provide an option to
license the use of the Products on the terms and subject to the conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants contained in this Agreement and other
good and valuable consideration the sufficiency of which is hereby acknowledged, the Parties agree
as follows:
1. Development Services. Receptors agrees to provide the Development Services and use
its commercially reasonable best efforts to develop the Products subject to the specifications
provided in the Program Plan attached hereto as Exhibit B, which may be modified by the
Parties in writing from time to time.
2. License Certain Rights. So long as PositiveID is current on the Development Fee
Payments described in Section 4 below, Receptors grants PositiveID the license as described in the
Amended and Restated License Agreement attached hereto as Exhibit C (the “License
Agreement”).
3. Ownership of Products. PositiveID acknowledges and agrees that the Products
contain proprietary and patent protected material and contain trade secrets and other intellectual
property rights exclusively owned by Receptors. PositiveID agrees to maintain the secrecy of the
contents of the Products and implement adequate safeguards to prevent and protect the contents of
the Products from unauthorized use or disclosure. Subject to the rights PositiveID may attain from
the License Agreement, PositiveID agrees that Receptors is and shall remain the sole and exclusive
owner of all rights, title, and interest in and to the Products including any enhancements,
updates, modifications and any patents, copyrights, trade secrets, and any other intellectual
property rights related thereto. PositiveID shall not take any action inconsistent with such
ownership. Except as set forth in Section 2 above, this Agreement does not grant PositiveID any
rights to any patents, copyrights, trade secrets, tradenames, trademarks (whether registered or
unregistered), or any other rights or licenses with respect to the Products. This Section shall
survive the termination of this Agreement.
4. Development Fees. In exchange for the Development Services, PositiveID shall pay
Receptors the amounts specified in Exhibit D. In the event of any change in the
outstanding
shares of PositiveID stock by reason of any recapitalization, reorganization, merger,
consolidation, split-up, combination or exchange of shares or other similar change affecting the
stock of PositiveID, PositiveID and Receptors shall make an adjustment to the PositiveID stock to
which Receptors is entitled under this Section 4 as shall be equitable and appropriate.
5. Term. This Agreement shall remain in force until the Products are delivered and
accepted pursuant to the schedule in Exhibit B, unless sooner terminated under the provisions of
Section 6 below.
6. Termination.
| a. | Receptors may, in its sole discretion, immediately terminate
this Agreement if (i) PositiveID materially breaches any provision of this
Agreement and such breach is not cured within thirty (30) days following
written notice from Receptors or (ii) if PositiveID becomes insolvent, makes a
general assignment for the benefit of creditors, files a voluntary petition of
bankruptcy, suffers or permits the appointment of a receiver for its business
or assets, or becomes subject to any proceeding under any bankruptcy or
insolvency law, whether domestic or foreign, or has wound up or liquidated,
voluntarily or otherwise. In addition, PositiveID at anytime may discontinue
the Development Fee Payments described in Section 4 above in which case this
Agreement shall immediately terminate, PositiveID shall lose its License, and
Receptors shall have no further obligations under Section 1 above. |
||
| b. | PositiveID may, in its sole discretion, immediately terminate
this Agreement if (i) Receptors materially breaches any provision of this
Agreement and such breach is not cured within thirty (30) days following
written notice from PositiveID or (ii) if Receptors becomes insolvent, makes a
general assignment for the benefit of creditors, files a voluntary petition of
bankruptcy, suffers or permits the appointment of a receiver for its business
or assets, or becomes subject to any proceeding under any bankruptcy or
insolvency law, whether domestic or foreign, or has wound up or liquidated,
voluntarily or otherwise. |
7. Equitable Remedies And Enforcement. The Parties acknowledge and agree that breach
of any of the obligations under this Agreement shall cause irreparable injury and shall entitle the
non-breaching Party to equitable relief or remedy. The pursuit or securing of any such equitable
relief shall not prohibit or limit a Party to seek or obtain any other remedy provided under this
Agreement or by law. The covenants, agreements and remedies provided herein are in addition to,
and are not to be construed as a replacement for or limited by, the rights and remedies otherwise
available to a Party including, but not limited to, those rights and remedies contained in the
Uniform Trade Secrets Act, or its state counterparts.
8. Notice. Any and all notices called for under this Agreement shall be in writing,
and presented personally or by certified mail, postage prepaid, or recognized overnight delivery
services to Receptors or PositiveID to the following address as the case may be:
If to Receptors:
|
Receptors LLC | |
| ▇▇▇▇▇ ▇▇▇▇ / MD 57 | ||
| ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇. | ||
| ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ | ||
| ATTN: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Ph.D |
If to PositiveID:
|
PositiveID Corporation | |
| ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇. | ||
| ▇▇▇▇▇ ▇▇▇ | ||
| ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ | ||
| ATTN: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ |
9. Governing Law; Jurisdiction; Venue; Attorney Fees. This Agreement shall be
construed and enforced in accordance with the laws of the State of New York. Should it be
necessary to institute an action to enforce any of the terms contained in this Agreement,
PositiveID agrees said action shall and must be instituted in the State of New York. The Parties
hereby waive any and all defenses based on lack of personal jurisdiction or forum non conveniens.
Should a Party default under any of the terms of this Agreement, that Party hereby agrees to pay
the reasonable attorney’s fees incurred by the other Party in enforcing the terms of this
Agreement. The attorney’s fees shall be paid by the defaulting Party irrespective of any damages
recovered or any relief afforded to the non-defaulting Party.
10. Entire Agreement. This Agreement states the Parties’ entire agreement and
understanding of the subject hereof. This Agreement supersedes all prior understanding and
agreements. Any prior agreement or understandings between the Parties is null and void.
11. Modification. This Agreement may be modified only in a writing signed by the
Parties.
12. Severability. If any provision or clause of this Agreement as applied to either
Party or to any circumstances, shall be adjudged by a court of competent jurisdiction to be invalid
or unenforceable, said adjudication shall in no way affect any other provision of this Agreement,
the application of such provision in any other circumstances, or the validity or enforceability of
this Agreement.
13. Assignment. Each Party may not assign its rights or delegate its duties under
this Agreement without the other Party’s prior written consent. Any attempted assignment or
delegation by a Party without the required consent will be void. Notwithstanding the foregoing,
either Party may assign this Agreement including, without limitation to an affiliate, subsidiary,
third party, or successor without the other Party’s prior consent.
14. Execution in Counterparts. This Agreement may be executed in counterparts, and/or
by facsimile, each of which shall be deemed to be an original, and all of which shall constitute
the same Agreement.
15. Prior Agreement. Each Party acknowledges and agrees that the Glucose Sensor
Development Agreement, dated effective January 1, 2008, by and among Receptors, PositiveID and DOC
(the “Prior Agreement”) is hereby terminated and that the intent of this Agreement is to replace
and supercede the Prior Agreement. PositiveID confirms that in an Asset Purchase Agreement dated
November 12, 2008 it acquired all of the rights and obligations of DOC under the Prior Agreement.
16. Non-Development. Except as provided hereunder for the benefit of PositiveID,
Receptors shall not, during the Term of or for ten (10) years thereafter, directly or indirectly,
sell, license, lease, create, design, develop, fund or assist in the sale, license, creation,
design, or development or funding of the Product (or future products based on an in vivo glucose
sensing
device for use in humans or animals) or other in vivo glucose sensing products or systems to
be used in humans or animals.
17. Rights. In the event that Receptors and PositiveID can not reach, for any reason,
an agreement as to future development programs after this Phase II, (i) the restrictions in Section
16 hereof shall automatically terminate, (ii) Receptors may cancel the License Agreement, subject
to a ten percent (10%) royalty due to PositiveID pursuant to Section 6.2 of the License Agreement,
and (iii) PositiveID will promptly provide to Receptors an exclusive worldwide license to any
rights PositiveID or any transferee thereof may have relating to glucose or glucose monitoring
including without limitation the implemention of microchips in humans or animals for monitoring
glucose.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of the day and
year first written above.
| Receptors LLC | PositiveID Corporation | |||||||||
| By: | /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ | By: | /s/ ▇▇▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇ | |||||||
| Its: | President | Its: | President | |||||||