1
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "▇▇▇▇"). This Exhibit has been filed separately with the
Secretary of the Commission without the ▇▇▇▇ pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
EXHIBIT 10.23
COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
BETWEEN
▇▇▇ ▇▇▇▇▇ AND COMPANY
AND
AURORA BIOSCIENCES CORPORATION
2
TABLE OF CONTENTS
1. DEFINITIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
2. LILLYUHTSS DEVELOPMENT AND DELIVERY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
2.1. LILLYUHTSS Development. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
3. COLLABORATIVE SCREENING PROGRAMS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
3.1. Collaborative Screening Program . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
3.2. Lilly Screening Payments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
3.3. Ownership of Data. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
3.4. Development of Products . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
3.5. Laboratory Facilities and Personnel . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
4. SERVICE AND SUPPORT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30
4.1. Service and Support . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30
5. INTELLECTUAL PROPERTY RIGHTS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30
5.1. Grant of Rights from Aurora to Lilly . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30
5.2. Grant of Rights from Lilly to Aurora. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31
5.3. Ownership of Intellectual Property . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31
6. PAYMENTS OF ROYALTIES, ACCOUNTING FOR ROYALTIES, AND RECORDS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32
6.1. Payment and Term . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32
6.2. Payment Dates. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33
6.3. Accounting. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33
6.4. Records. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33
7. INTELLECTUAL PROPERTY ENFORCEMENT AND DEFENSE OF INFRINGEMENT CLAIMS . . . . . . . . . . . . . . . . . . . . . . . . . . 34
7.1. Intellectual Property Enforcement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34
7.2. Defense of Infringement Claims Pertaining to Lilly Hits, Approved PTAC Compounds, and Covered Products. . . . . . . 34
7.3. Defense of Infringement Claims Pertaining to Aurora Technology and Aurora Patent Rights . . . . . . . . . . . . . . 35
8. TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY, AND CHANGE OF CONTROL . . . . . . . . . . . . . . . . . . . . . . . . 35
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8.1. Confidentiality . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35
8.2. Publication of Results . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37
8.3. Publicity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38
9. PATENT PROSECUTION AND COPYRIGHTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38
9.1. Patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38
9.2. Copyrights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38
TABLE OF CONTENTS, CONTINUED
10. WARRANTIES AND INDEMNIFICATION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39
10.1. Mutual Representations and Warranties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39
10.2. Warranties and Aurora Technology. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 40
10.3. Aurora Indemnification. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 40
10.4. Warranties and Lilly Technology. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41
10.5. Lilly Indemnification. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42
11. TERM, PARTIAL PERFORMANCE AND TERMINATION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42
11.1. Term. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42
11.2. Termination By Mutual Agreement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43
11.3. Termination Without Cause by Lilly. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43
11.4. Partial Performance. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44
11.5. Termination for Cause. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 45
11.6. Effect of Bankruptcy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 45
11.7. Effect of Expiration or Termination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
12. MISCELLANEOUS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
12.1. Assignment. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
12.2. Binding Effect. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
12.3. Force Majeure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
12.4. Notices. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
12.5. Governing Law and Jurisdiction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48
12.6. Waiver. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49
12.7. Severability. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49
12.8. Independent Contractors. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49
12.9. Counterparts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49
12.10. Entire Agreement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50
12.11. No Third Party Beneficiaries. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50
12.12. Construction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50
12.13. Dispute Resolution. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50
3
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COLLABORATIVE RESEARCH AND LICENSE AGREEMENT
THIS AGREEMENT is entered into as of the Effective Date (as defined below) by
and between ▇▇▇ ▇▇▇▇▇ AND COMPANY, an Indiana corporation, having offices at
Lilly ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Lilly"), and between
AURORA BIOSCIENCES CORPORATION, a Delaware corporation having offices at ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Aurora").
RECITALS
WHEREAS, Aurora has expertise in the development of automated ultra-high
throughput screening systems and screening biologies/chemistries used therein;
and
WHEREAS, Aurora has the scientific expertise and capacity to undertake the
alliance activities described below; and
WHEREAS, Lilly has the capability to undertake screening and development of
drug products for the prevention, treatment and diagnosis of diseases and
disorders.
NOW, THEREFORE, in consideration of the foregoing premises and of the
covenants, representations and agreements set forth below, the parties agree as
follows:
1. DEFINITIONS
As used herein, the following terms shall have the following meanings:
"Activity" means a ***.
"Affiliate" means, with respect to any Person, any other Person which directly
or indirectly controls, is controlled by, or is under common control with, such
Person. A Person shall be regarded as in control of another Person if
it/he/she owns, or directly or indirectly controls, more than fifty percent
(50%) of the voting securities (or comparable equity interests) or other
ownership interests of the other Person, or if it/he/she directly or indirectly
possesses the power to direct or cause the direction of the management or
policies of the other Person, whether through the ownership of voting
securities, by contract or any other means whatsoever.
"Agreement" means this agreement, together with all appendices, exhibits and
schedules hereto, and as the same may be amended or supplemented from time to
time hereafter by a written agreement duly executed by authorized
representatives of each party hereto.
*** CONFIDENTIAL TREATMENT REQUESTED
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"Approved PTAC Compound" means a ***
"Aurora Copyrights" means all copyrights throughout ***
"Aurora Patent Rights" means the Aurora Reporter System Patent Rights and the
Aurora UHTSS Patent Rights.
"Aurora Reporter" means *** The Aurora Reporters available as of the
Effective Date are described on Exhibit 1.2 attached hereto.
"Aurora Reporter System Technology" means all Technology owned or Controlled by
Aurora or its Affiliates that relates to the Aurora Reporter Systems.
"Aurora Reporter System Patent Rights" means all Patent Rights owned or
Controlled by Aurora or its Affiliates which relate to the Aurora Reporter
Systems.
"Aurora Technology" means the Aurora Reporter System Technology and the Aurora
UHTSS Technology.
"Aurora UHTSS Patent Rights" means all Patent Rights ***
"Aurora UHTSS Technology" means all Technology ***
"Collaborative Screening Program" and "Collaborative Screen" shall have the
meanings set forth in Section 3.1.
"Completion" or "Completed" has the meaning set forth in Section 2.1.3.
***CONFIDENTIAL TREATMENT REQUESTED
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"Confidential Information" means all information, compounds, data, and
materials received by either party from the other party pursuant to this
Agreement and all information, compounds, data, and materials developed in the
course of the collaboration, including, without limitation, Technology of each
party, subject to the exceptions set forth in Sections 8.1.
"Control" or "Controlled" means possession by a party or its Affiliates of the
ability to grant a license or sublicense in accordance with the terms of this
Agreement, and without violating the terms of any agreement by such party with
any Third Party.
"Covered Product" means ***
"CSP Steering Committee" shall have the meaning set forth in Section 3.1.1.
"Deliverables" has the meaning set forth in Section 2.1.2.1 hereof.
"Derivative" means ***
"Development Phases" has the meaning set forth in Section 2.1.2.1 hereof.
"Effective Date" means the date that this Agreement is executed by the last
party to so execute.
"FDA" shall mean the United States Food and Drug Administration, or any
successor agency having regulatory jurisdiction over the manufacture,
distribution and sale of drugs in the United States and equivalent in any other
jurisdiction.
"First Commercial Sale" of a Covered Product shall mean the first commercial
sale for use or consumption of such Covered Product in a country after required
marketing and, if applicable, pricing approval has been granted by the
applicable regulatory authority(ies) of such country.
"Hit" means *** ;
***
***CONFIDENTIAL TREATMENT REQUESTED
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***
"IND" means an Investigational New Drug application filed with and accepted by
the FDA and any corresponding application filed in any country other than the
United States.
"Internal Research" means any ***
"Invention" means any new and useful process, machine, manufacture, or
composition of matter, or improvement thereto, whether or not patentable.
"Know-How" means information and data which is not generally known to the
public, comprising: Inventions, designs, concepts, algorithms, formulae,
software, supplies, techniques, practices, processes, methods, knowledge,
skill, experience, expertise and technical information.
"Lilly Patent Rights" means Patent Rights owned or Controlled by Lilly and
relating to the Collaborative Screening Program or Aurora Reporter Systems.
"Lilly Screening Program," "LSP" or "Lilly Screen" have the meanings set forth
in Section 3.2 hereof.
"Lilly Technology" means Technology owned or Controlled by Lilly and relating
to the Collaborative Screening Program.
"Lilly Test Materials" means ***
"LILLYUHTSS" means the ***
*** CONFIDENTIAL TREATMENT REQUESTED
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***
"LILLYUHTSS Steering Committee" shall have the meaning set forth in Section
2.1.1.
"LILLYUHTSS Target Delivery Date" has the meaning set forth in Section 2.1.2.1
hereof.
Manufacturing Cost" ***
"Materials" means any reagents, probes, genetic sequences, promoters,
enhancers, probes, linkage probes, vectors, plasmids, proteins and fragments
thereof, peptides, biological modifiers, antigens, antibodies, antagonists,
agonists, inhibitors, chemicals, and compounds.
"Module One" has the meaning set forth in Section 2.1.2.1 (i) hereof.
"Module Two" has the meaning set forth in Section 2.1.2.1 (ii) hereof.
"Module Three" has the meaning set forth in Section 2.1.2.1 (iii) hereof.
"NDA" means a New Drug Application or Product License Application, as
appropriate, and all supplements pursuant to the requirements of the FDA,
including all documents, data and other information concerning Covered Products
which are necessary for full FDA approval to market a Covered Product, or the
equivalent in any other country.
"Net Sales" shall mean, with respect to Covered Product(s), *** ***
*** CONFIDENTIAL TREATMENT REQUESTED
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***
***
Such amounts shall be determined from the books and records of Lilly maintained
in accordance with generally accepted accounting principles ("GAAP")
consistently applied.
***
"Patent Rights" means all U.S. or foreign (including regional authorities such
as the European Patent Office) regular or provisional patent applications,
including any continuation, continuation-in-part, or division thereof or any
substitute application therefor or equivalent thereof, and any patent issuing
thereon, including any reissue, reexamination or extension thereof and any
confirmation patent or registration patent or patent of additions based on any
such patent, containing one or more claims to an Invention (and in the case of
an issued patent, containing one or more Valid Claims), and which a party
hereto owns or Controls, individually or jointly, any title thereto or rights
thereunder.
"Person" shall mean an individual, corporation, partnership, limited liability
company, trust, business trust, association, joint stock company, joint
venture, pool, syndicate, sole
*** CONFIDENTIAL TREATMENT REQUESTED
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proprietorship, unincorporated organization, governmental authority, or any
other form of entity not specifically listed herein.
"Phase III Clinical Trial" means that portion of a clinical development program
which provides for the trial of an Approved PTAC Compound on sufficient numbers
of patients and which is designed to establish the safety and efficacy of such
a product in order to support an NDA.
"PTAC" means *** or its equivalent.
"Product" means any ***
"Royalty Term" means ***
"Specifications" of the LILLYUHTSS shall have the meaning set forth in Section
2.1 hereof.
"Technology" means Materials and Know-How.
"Term" means the period beginning on the Effective Date and terminating in
accordance with this Agreement, as in Section 11.
"Territory" means all countries of the world.
"Third Party" means any entity other than (i) Aurora and any of its Affiliates,
and (ii) Lilly and any of its Affiliates.
"Valid Claim" means: (a) an issued claim under an issued patent within the
Patent Rights, which has not (i) expired or been canceled, (ii) been declared
invalid by an unreversed and unappealable decision of a court or other
appropriate body of competent jurisdiction, (iii) been admitted to be invalid
or unenforceable through reissue, disclaimer or otherwise, and/or (iv) been
abandoned; or (b) a claim included in a pending patent application within the
Patent Rights that is being actively prosecuted in accordance with this
Agreement and which has not been (v) canceled, (vi) withdrawn from
consideration, (vii) finally determined to be unallowable by the applicable
governmental authority for whatever reason (and from which no appeal is or can
be taken), and/or (viii) abandoned.
*** CONFIDENTIAL TREATMENT REQUESTED
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"Validation" has the meaning set forth in Section 2.1.3.
2. LILLYUHTSS DEVELOPMENT AND DELIVERY
2.1. LILLYUHTSS Development.
Aurora will be responsible for the design, development, manufacture,
supply, delivery and installation of the LILLYUHTSS, and will use its
best efforts to complete same within the time frames for each
Development Phase set forth below. The Specifications for the
Deliverables to be provided by Aurora, as customized for Lilly, are
set forth in Exhibit 1.1 hereto ("Specifications").
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2.1.1. Project Management.
The parties shall establish a committee that will use
reasonable efforts to coordinate the development, training,
completion, and validation of the LILLYUHTSS (the "LILLYUHTSS
Steering Committee"). The LILLYUHTSS Steering Committee will
be established not later than thirty (30) days after the
Effective Date. The LILLYUHTSS Steering Committee shall
consist of three (3) representatives designated by Lilly and
three (3) representatives designated by Aurora. Each
representative will have one vote and each party will have
exactly three votes. The LILLYUHTSS Steering Committee will
meet at least three times per year at mutually agreed upon
times and locations using mutually agreed upon meeting
formats, including tele- and video- conferencing.
A material change in the Specifications will be approved by
simple majority vote of the LILLYUHTSS Steering Committee. In
the event of a deadlock by the LILLYUHTSS Steering Committee
on the approval of a material change in the Specifications
proposed by ▇▇▇▇▇, ▇▇▇▇▇▇ shall have the right to approve such
material change to the Specifications. In the event of a
deadlock by the LILLYUHTSS Steering Committee on the approval
of a material change in the Specifications proposed by Aurora,
Lilly shall have the right to approve such material change to
the Specifications. The Validation or Completion of the
LILLYUHTSS will be approved by simple majority vote of the
LILLYUHTSS Steering Committee. In the event of a deadlock by
the LILLYUHTSS Steering Committee of the approval of the
Validation or Completion of the LILLYUHTSS, Lilly's Vice
President of Research Technologies and Proteins and Aurora's
president will meet in person or by video-conferencing to
resolve the approval of the Validation or Completion of the
LILLYUHTSS.
Aurora shall also submit progress reports to the LILLYUHTSS
Steering Committee at such time(s) as Lilly may reasonably
request, but in any event will provide a written update of its
work on the development of the LILLYUHTSS (including
discussion of any significant problems encountered and
significant changes in strategy or design) every six (6)
months.
From time to time during the term of this Agreement, Lilly
representatives shall have the right, upon reasonable advance
written notice to Aurora, to
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visit the facilities where the LILLYUHTSS development is being performed.
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2.1.2. Development Phases; Delivery.
2.1.2.1. Development Phases.
Aurora will design and develop the LILLYUHTSS in
accordance with the following development phases
("Development Phases"), as more fully described in
Exhibit 1.1 hereto. Aurora will develop and install
the deliverables for the LILLYUHTSS ("Deliverables")
contemplated by each such Development Phase (all such
Deliverables for a Development Phase comprising a
"Module") not later than the dates set forth below
(each such date referred to as a "LILLYUHTSS Target
Delivery Date"):
i) Module One - Automated Storage and Retrieval
- ***; and
ii) Module Two - Liquid handling, Screening
Formats, Detection and Screen Development
Stage - ***; and
iii) Module Three - Informatics and Integration
("Module Three"), and Installation of a Fully
Operational, Complete LILLYUHTSS System - ***
2.1.2.2. Shipment, and Installation.
Aurora shall be responsible for the appropriate
packaging of all Deliverables to be delivered to
Lilly. Lilly will be responsible for associated
delivery charges. Aurora will be responsible for
installing all Deliverables, unless otherwise
mutually agreed to in writing. Aurora will begin
such installation within 15 working days of delivery
to Lilly and will use its best efforts to complete
the same as promptly as possible thereafter and Lilly
will use best efforts to prepare in advance for such
installation and to facilitate such installation
after delivery.
*** CONFIDENTIAL TREATMENT REQUESTED
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2.1.3. Validation and Completion Testing.
All Deliverables shall be subject to testing by or for Aurora
prior to delivery to Lilly. When all Deliverables for a
Module have successfully conformed to or satisfied the
Specifications for such Deliverables ("Validation") in
Exhibits 1.1 hereto, or as the same may be amended or
supplemented in writing by mutual agreement of the parties
from time to time hereafter, Aurora shall give Lilly written
notice.
Upon installation by Aurora of all Deliverables for a
particular Development Phase at Lilly, additional testing
shall commence by Aurora and Lilly and shall continue for such
period of time as may be reasonably required to verify in the
opinion of the LILLYUHTSS Steering Committee whether all such
Deliverables meet the Specifications for such Deliverables
("Completion") in Exhibits 1.1 hereto, or as the same may be
amended or supplemented in writing by the parties from time to
time hereafter therefor. Upon Completion of all Deliverables
for a Module at ▇▇▇▇▇, ▇▇▇▇▇▇ shall give Lilly written notice
thereof, in which event Lilly shall become obligated to pay
such amounts provided in Section 2.1.4. Upon the payment by
Lilly of such amounts, Lilly will take ownership the
associated Deliverable.
2.1.4. Payments Relating to Development of the LILLYUHTSS.
Lilly will make the following payments to Aurora in
consideration of the design, development, delivery,
manufacture, support, Validation and Completion of the
LILLYUHTSS and its modules:
2.1.4.1. A payment *** shall be made within fifteen
(15) business days after the Effective Date
in consideration for the design and
development of the LILLYUHTSS by Aurora
hereunder.
2.1.4.2. Module One: A *** shall be made within
thirty (30) days following Completion of
all Deliverables required by Section
2.1.2.1 (i).
*** CONFIDENTIAL TREATMENT REQUESTED
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2.1.4.3. Module Two: *** shall be made within
thirty (30) days following Completion of
all Deliverables required by Section
2.1.2.1 (ii).
2.1.4.4. Module Three: *** *** shall be within
thirty (30) days following Completion of
all Deliverables required by Section
2.1.2.1 (iii).
2.1.4.5. Ongoing payments of *** shall be made for
the design and development of the
LILLYUHTSS, the first payment to be made on
or before January 15, April 15, July 15 or
October 15 occurring after the Effective
Date and then every three months
thereafter, which payments shall cease upon
the first to occur of *** provided,
however, that if ***
2.1.4.6. In addition to any payments to be made
under Sections 2.1.4.1-2.1.4.5, the
following payments shall be made depending
upon the date of Completion of Module
Three of the LILLYUHTSS pursuant to
Section 2.1.3:
2.1.4.6.1. ***
***CONFIDENTIAL TREATMENT REQUESTED
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2.1.4.6.2. ***
2.1.4.6.3. ***
2.1.5. Penalty for Late Completion of LILLYUHTSS.
If Completion of the LILLYUHTSS under Section 2.1.2.1 (iii)
occurs more than *** following the Effective Date, then as
penalty therefor, Aurora will pay to Lilly *** for ***
following the date that is *** after the Effective Date until
such Completion occurs (if at all); provided, that such
payments shall not in any case exceed *** .
***
***CONFIDENTIAL TREATMENT REQUESTED
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***
2.1.6.2. Syndicate Formation and Limitations.
It is understood that Aurora is seeking to
collaborate with, and supply to, and grant certain
license rights to Third Parties with respect to the
use and supply of a system similar to the LILLYUHTSS
to such Third Party. Notwithstanding the foregoing,
Aurora covenants and agrees that, so long as Lilly is
not in default of any payment obligation hereunder
and has not
***CONFIDENTIAL TREATMENT REQUESTED
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terminated its participation in the development of the
LILLYUHTSS, then, until the date that is *** following the
date of Completion by Aurora of the fully operational
LILLYUHTSS pursuant to Section 2.1.3, Aurora will not, without
Lilly's prior written consent, provide more than *** Parties
with license rights to the Aurora UHTSS Patent Rights or Aurora
Copyrights or Aurora UHTSS Technology to use any ultra-high
throughput screening system made by Aurora that is similar to
the LILLYUHTSS and the right to purchase such ultra-high
throughput screening system.
2.1.7. Supply of Reporters.
Aurora shall deliver all of the Aurora Reporters listed in
Exhibit 1.2 to Lilly within *** of the Effective Date. So long
as Lilly has made payments in accordance with Section 2.1.8
hereof, then, at Lilly's request, Aurora will use reasonable
efforts to supply within *** after receipt of a written
purchase order therefor, reagents/tools pertaining to the
Aurora Reporter Systems as Lilly may require in order to use
the Aurora Reporter Systems in a Lilly Screening Program
conducted by Lilly. Lilly will be charged for all supplies so
delivered *** . Lilly will pay for all supplies so ordered
within *** after delivery to Lilly.
2.1.8. Payments in Consideration of the Use of the Aurora
Reporter System Technology and Aurora Reporter
System Patent Rights.
Lilly's right to use Aurora Reporters requires that Lilly pay
to Aurora *** ). Half of *** will be made within ten (10)
business days of the Effective Date and the second half of ***
shall be made *** after the Effective Date. All other *** for
Aurora Reporters will be distributed as a ***
Three years after the Effective Date, Lilly may elect to renew
its yearly license for Aurora Reporters for an *** and for
consecutive one
***CONFIDENTIAL TREATMENT REQUESTED
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year periods thereafter. Lilly will provide Aurora with sixty
(60) days written notice of Lilly's intent to renew or not renew
its yearly license. *** after the Effective Date, *** for
Aurora Reporters will be distributed as ***.
2.1.8.1. Option to Additional Aurora Reporters.
So long as Lilly satisfies its payment obligations
under Section 2.1.8 for Aurora Reporters, Aurora
agrees to negotiate in good faith with Lilly to use
additional reporters, which are not listed in Exhibit
1.2 and developed by Aurora, for Lilly's Internal
Research for terms comparable to those offered by
Aurora to a Third Party.
3. COLLABORATIVE SCREENING PROGRAMS
3.1. Collaborative Screening Program
The parties will collaborate in developing and validating
Collaborative Screens as part of a Collaborative Screening Program
(CSP), as follows:
3.1.1. Collaborative Screen Program Management.
Under the CSP, Lilly and Aurora will collaborate to develop
high throughput and/or ultra high throughput screens for
Lilly's use in accordance with this Agreement. Lilly shall
propose *** targets, one molecular target at a time, and
Aurora may, within thirty (30) days of such proposal, choose to
select such molecular target. Lilly shall continue to propose
molecular targets until Aurora has selected a total of ***
targets for screen development. The *** molecular targets
proposed by Lilly shall be targets that Lilly reasonably
believes to be amenable for the development of a high
throughput screen using Aurora Technology. The parties will
use reasonable efforts to select *** following the Effective
Date, and the remaining target *** after the Effective Date.
No later that thirty (30) days after the Effective Date, the
parties shall establish a CSP Steering Committee (the "CSP
Steering Committee"). The CSP Steering Committee shall
consist of three (3) representatives designated by Lilly and
three (3) representatives designated by Aurora.
***CONFIDENTIAL TREATMENT REQUESTED
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Each representative will have one vote and each party will
have exactly three votes. The CSP Steering Committee will
meet at least three times per year at mutually agreed upon
times and locations using mutually agreed upon meeting
formats, including tele- and video-conferencing.
The CSP Steering Committee will coordinate screen development
(including the formation and management of a CSP Work Plan for
each CSP Screen within thirty (30) days of Aurora choosing to
accept a Lilly proposed molecular target), and approve the
validation of each CSP screen. Each screen, together with all
of the reagents to be delivered by Aurora in connection
therewith, is referred to hereinafter as a "CSP Screen", which
shall be manufactured by Aurora and delivered to Lilly. The
validation of each CSP Screen at Aurora will be approved by a
simple majority vote of the CSP Steering Committee. In the
event of a deadlock by the CSP Steering Committee of the
approval of the validation of a CSP Screen, Lilly shall have
the right to approve the validation of the CSP Screen.
Promptly following mutual agreement on the selection of each
target, the CSP Steering Committee will jointly prepare an
"CSP Work Plan", which shall set forth the respective
responsibilities of the in the development of each CSP Screen,
and which must be approved by the CSP Steering Committee.
Each such CSP Work Plan will contain, where applicable, a
description of the tasks to be performed by each party,
location, the specific deliverables and documentation to be
produced by Aurora, validation criteria for each CSP Screen, a
schedule of performance, fees (as determined in accordance
with this Section 3.1.1), a schedule of payments, and any
other relevant work specifications.
Promptly following the approval of each CSP Work Plan, the
parties will commence their respective duties under the CSP
Work Plan for the development of the applicable CSP Screen.
All work under a CSP Work Plan shall be performed in
accordance with the provisions of this Agreement, and each
party will use reasonable efforts to complete its obligations
under the CSP Work Plan as expeditiously as practicable.
In developing each CSP Work Plan, the CSP Steering Committee
will determine and agree upon the fee to be paid by Lilly to
Aurora for development, manufacture and delivery of an CSP
Screen to Lilly for the target in question. The parties
understand and agree that the exact fee per target will be
determined as the sum of the following: ***
***CONFIDENTIAL TREATMENT REQUESTED
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*** In the event of a deadlock by the CSP Steering Committee
of the approval of the CSP Work Plan, Lilly shall have the
right to approve the validation of the CSP Screen.
Alternatively, Aurora may elect to accept to undertake the
development of such CSP Screen for *** . The *** (i) shall be
reimbursed to Aurora by Lilly monthly in arrears *** an *** by
*** , and the *** shall be paid within thirty (30) days
following *** ***. If Aurora elects to undertake the CSP for
*** , such payment shall be paid within thirty (30) days
following the delivery of a validated Collaborative Screen as
per the CSP Work Plan.
If the expenses for an approved CSP Work Plan exceed the
amount approved for such CSP Screen, then a simple majority
vote of the CSP Steering Committee will approve additional
funds for such CSP Work Plan and require Lilly to provide the
same. If the CSP Steering Committee does not approve
additional funds in excess of the amount approved for such CSP
Screen for such CSP Work Plan, then Lilly will notify Aurora
in writing of one of the following options within ten (10)
days:
i) Lilly can elect to not pursue such
Collaborative Screen and Aurora can optionally a)
complete such Collaborative Screen and submit it for
validation to the CSP Steering Committee or b) Aurora
can abandon the Collaborative Screen, in either case
such Collaborative Screen will count as one of the
Collaborative Screens of the CSP,
ii) Lilly can elect to pursue such Collaborative
Screen as a Lilly Screen, provided, however that
Aurora can optionally a) continue to develop such
Collaborative Screen for no more than an additional
three months and submit it for validation to the CSP
Steering Committee or b) Aurora can abandon the
Collaborative
***CONFIDENTIAL TREATMENT REQUESTED
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Screen (in all such cases under 3.1.1 (ii) such
Collaborative Screen will count as one of the
Collaborative Screens of the CSP), or
iii) Lilly can elect to complete such
Collaborative Screen, Aurora will transfer all
Materials developed by Aurora pursuant to the CSP
Work Plan for such Collaborative Screen, and upon
completion will then be submitted to the CSP Steering
Committee for validation, and such Collaborative
Screen will count as one of the Collaborative Screens
of the CSP.
If at any time during the Term a CSP Screen for whatever
reason loses its effectiveness or efficacy or is no longer
biologically active, Aurora will replace same as promptly as
practicable, in which event Lilly will reimburse Aurora for
*** .
3.1.2. Deployment of Screen by Lilly.
Lilly will use reasonable efforts to employ each such accepted
CSP Screen to screen Lilly Test Materials, using Lilly's then
current screening practices.
3.1.3. Additional Screens.
Subject to the same terms and conditions as are set forth in
this Section 3.1, Lilly may elect that the number of CSP
Screens on which Lilly and Aurora shall collaborate to develop
and deliver to Lilly be increased *** .
3.1.4. Rights in Lilly Compounds.
All right, title and interest in any Inventions relating in
any way to any Lilly compounds or any Lilly Test Materials and
which arise out of, or are conceived or reduced to practice as
a result of, the development or use of an CSP Screen by or for
Lilly shall be owned solely by Lilly.
***CONFIDENTIAL TREATMENT REQUESTED
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3.1.5. Payments to Aurora.
In addition to such payments as are made by Lilly to Aurora
pursuant to Section 3.1.1 hereof, the following payments shall
be made to Aurora with respect to the delivery and use of the
CSP Screens by Lilly:
3.1.5.1. Milestones.
Lilly will pay to Aurora:
3.1.5.1.1. ***
3.1.5.1.2. For each Approved PTAC Compound
identified in a CSP Screen that
achieves the following
milestones, Lilly will promptly
notify Aurora of same and will
pay the following amounts to
Aurora:
*** CONFIDIENTIAL TREATMENT REQUESTED
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Event Payment (US$)
----- ----------------
*** ***
***
***
***
provided, however, that for a given milestone, Lilly will only
make one such payment per CSP Screen. All payments
shall be paid to Aurora within thirty (30) days following such
notification from Lilly.
3.1.5.2. Royalties.
With respect to each Covered Product based on a
Collaborative Screen Lilly shall pay a royalty on Net
Sales of such Covered Product during the Royalty Term
for such Covered Product, as follows, the sum of the
worldwide Net Sales ***); provided, however, that
cumulative royalties paid for a Covered Product will
not exceed ***.
3.2. Lilly Screening Payments
As part of the rights licensed under Section 5.1.1 hereof, Lilly and
its Affiliates shall have a license and right to use the Aurora
Reporter System Technology and Aurora Reporter System Patent Rights
licensed to it under Section 5.1.1 hereof, and to use any Aurora
Reporters or other reagents/tools supplied to Lilly by Aurora pursuant
to Section 2.1.7, to develop, make and use in Internal Research
targeting any targets as Lilly in its discretion may select
(collectively, such activities referred to as the "Lilly Screening
Program" or "LSP", and any such screen, the manufacture or use of
which is covered by the Aurora Reporter System
*** CONFIDENTIAL TREATMENT REQUESTED
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Technology and the Aurora Reporter System Patent Rights or in which
the Reporters supplied by Aurora are used, referred to as a "Lilly
Screen"). Lilly may further conduct any Internal Research,
development and commercialization thereafter of any Hits arising out
of any such LSP activities, or Derivatives of such Hits, as Lilly in
its discretion may elect to conduct. Subject to Section 3.2.3 below,
Lilly shall make milestone payments to Aurora with respect to such
Hits as arise out of any use of a Lilly Screen by Lilly or its
Affiliates, as follows:
3.2.1. Subject to Section 3.2.3, for *** , Lilly shall
promptly notify Aurora of such PTAC approval and
will pay Aurora *** . Payment shall be paid
to Aurora within thirty (30) days following such
notification from Lilly.
3.2.2. If an Approved PTAC Compound for which Lilly has made
a payment to Aurora under Section 3.2.1 reaches the
following milestones, Lilly will promptly notify
Aurora of same and will pay the following amounts to
Aurora:
Event Payment (US$)
----- ----------------
*** ***
***
***
Payments shall be made to Aurora within sixty (60) days
following such notification from Lilly.
*** CONFIDENTIAL TREATMENT REQUESTED
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3.2.2.1 Royalties.
With respect to each Covered Product based on a Hit
or Derivative identified through the use of any Lilly
Screen and where the development, manufacture, or use
the Lilly Screen is covered by a Valid Claim of the
patent application listed in Exhibit 5.2, Lilly shall
pay a royalty on Net Sales of such Covered Product
during the Royalty Term for such Covered Product, as
follows, ***
3.2.3.
If Lilly enters into an agreement with Aurora to
develop *** CSP Screens under Section 3.1 hereof,
then each such additional CSP Screen in excess of ***
shall reduce the number of Lilly Screens under this
Section 3.2 for which payments may need to be made
under Sections 3.2.1 above. For example, if Lilly
enters into CSP Work Plans for *** *** CSP Screens,
then the milestone payments under Section 3.2.1 shall
apply only to *** PTAC Approved Compounds
identified through the use of any Lilly Screen.
3.3. Ownership of Data.
All results and data solely with respect to any Hits and Approved PTAC
Compounds (and Derivatives of any of the foregoing made or obtained
by Lilly) generated by Lilly, its Affiliates and its and their
contractors arising out of the use by any of them of the LILLYUHTSS
and any CSP Screen or Lilly Screen, the use of any of the rights
licensed under Section 5 hereof, or otherwise arising out of this
Agreement shall be owned exclusively by Lilly and shall be treated as
Lilly Confidential Information hereunder.
3.4. Development of Products
Lilly will in its discretion determine which, if any, such Hit(s), or
Derivative(s) of Hit(s), will be approved as an Approved PTAC
Compound.
Lilly will be responsible for all pre-clinical and clinical
development, including all regulatory filings, of Hits and Approved
PTAC Compounds arising out of this Agreement. Lilly shall have
discretion and control over the conduct of, and all activities
associated with, the development or abandonment of any Approved
*** CONFIDENTIAL TREATMENT REQUESTED
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PTAC Compound, all regulatory activities relating to the manufacture,
use or sale of any Approved PTAC Compound or Product, and the
commercialization and marketing of any Product in any country. All
INDs, NDAs and other regulatory filings made or filed by Lilly for any
Approved PTAC Compound or Product shall be owned solely by Lilly.
Lilly will provide, at a minimum, written notification to Aurora once
every six (6) months on the development status of any Approved PTAC
Compound then in development arising out of any CSP Screening Program
or Lilly Screens that may be subject to milestones or royalties and
which shall be treated as Lilly Confidential Information hereunder.
Other than royalty reports required hereunder, no reports shall be
required of Lilly with respect to any activities connected with the
commercialization of any Covered Product approved for marketing in any
country.
3.5. Laboratory Facilities and Personnel
Aurora and Lilly shall each, at their respective cost and expense,
provide suitable and sufficient laboratory facilities and equipment,
and will devote sufficient, experienced personnel, as is needed to
carry out their respective obligations under this Agreement.
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4. SERVICE AND SUPPORT
4.1. Service and Support
For a period of twelve (12) months after Completion of a complete,
fully operational LILLYUHTSS pursuant to Section 2.1.3, Aurora will
provide, without additional charge to Lilly, service and support for
the applicable system and all system components, as such service and
support is more fully described on Exhibit 4.1 attached hereto
("Service and Support"). Aurora will be responsible for providing and
paying for this Service and Support, whether provided by Aurora itself
or through third party contractors (including those providing any
LILLYUHTSS components to Aurora). Aurora will designate an
appropriate Aurora employee to coordinate such Service and Support.
Following the applicable twelve (12) month period, Lilly may elect to
purchase Service and Support annually thereafter for such LILLYUHTSS
(or component thereof) for fee of *** . This purchased annual
Service and Support will be available to Lilly until *** pursuant to
Section 2.1.3, after which period Lilly and Aurora will negotiate in
good faith for further Service and Support.
5. INTELLECTUAL PROPERTY RIGHTS.
5.1. Grant of Rights from Aurora to Lilly
*** CONFIDENTIAL TREATMENT REQUESTED
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5.1.1. Aurora grants to Lilly *** to (i) develop, use and
make Collaborative Screens with Aurora Reporters for
Internal Research, and (ii) develop, use and make
Lilly Screens with Aurora Reporters for Internal
Research, and (iii) use the LILLYUHTSS for Internal
Research. The grant of rights *** does not include
the right to sublicense. The rights granted
hereunder shall be subject to any and all payments
required in Sections 2 and 3 hereof, and shall
continue until terminated in accordance with the
provisions of this Agreement. The rights granted
hereunder shall be subject to any third party
obligations.
5.2. Grant of Rights from Lilly to Aurora.
5.2.1. Lilly grants to Aurora and its Affiliates a
nonexclusive, worldwide license, without the right to
sublicense, under Lilly Patent Rights and Lilly
Technology to perform its obligations under this
Agreement relating to the Collaborative Screens.
Lilly also grants to Aurora and its Affiliates a
nonexclusive, worldwide license, with the right to
sublicense, under Lilly Patent Rights that are filed
as patent applications or are conceived as inventions
during any given year for which Lilly has made an
annual payment for Aurora Reporters as set forth in
Section 2.1.8, to make, use or sell Aurora Reporters
in any other reporter assays. The rights granted
hereunder shall continue until terminated in
accordance with the provisions of this Agreement.
5.3. Ownership of Intellectual Property
*** CONFIDENTIAL TREATMENT REQUESTED
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5.3.1. Except as otherwise expressly provided in this
Agreement, nothing in this Agreement is intended to
convey or transfer ownership by one party to the
other of any rights, title or interest in any
Confidential Information, Technology, copyrights or
Patent Rights owned or Controlled by a party. Except
as expressly provided for in this Agreement, nothing
in this Agreement shall be construed as a license or
sublicense by one party to the other of any rights in
any Technology, copyrights, or Patent Rights owned or
Controlled by a party or its Affiliates.
5.3.2. Lilly shall own all Inventions and other Technology
made solely by its employees and agents, and all
patent applications and patents claiming such
Inventions. Aurora shall own all Inventions and
other Technology made solely by its employees and
agents, and all patent applications and patents
claiming such Inventions. All Inventions and other
Technology made jointly by employees or agents of
Lilly and employees or agents of Aurora shall be
owned jointly by Lilly and Aurora, provided, however,
that all patentable Inventions shall be owned in
accordance with U.S. patent law.
6. PAYMENTS OF ROYALTIES, ACCOUNTING FOR ROYALTIES, AND RECORDS
6.1. Payment and Term
In consideration of the rights granted herein to Lilly by Aurora and
services provided to Lilly by Aurora relating to the Collaborative
Screening Program, Lilly agrees to pay Aurora as set forth in Section
3.0 and as follows in Section 6.0. All royalties required to be paid
by Lilly in this Agreement shall be paid ***; thereafter, Lilly shall
be entitled to continue to sell such Covered Product in such country
without further compensation to Aurora hereunder.
If Lilly is required by the United States government or other
authorities to withhold any tax on the amounts payable to Aurora under
this agreement, Lilly shall be allowed to do so, and shall in such
case remit royalty payments to Aurora net of such withheld amount,
provided that Lilly furnishes Aurora with proof of payment of such
withholdings as soon as practicable after such withholding in order
that Aurora may use the withholding tax paid as a tax credit.
*** CONFIDENTIAL TREATMENT REQUESTED
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6.2. Payment Dates.
Royalties shall be paid by Lilly on Net Sales within sixty (60) days
after the end of each calendar quarter in which such Net Sales are
made. Such payments shall be accompanied by a statement showing all
relevant sales information, including the information employed to
calculate Net Sales of each Covered Product in each country, and the
calculation of the amount of royalty due.
6.3. Accounting.
The Net Sales used for computing the royalties payable to Aurora by
Lilly shall be paid in U.S. dollars by wire transfer or other mutually
acceptable means. Lilly's current standard exchange rate methodology
will be employed for the translation of foreign currency sales into
United States dollars. This methodology is used by Lilly in the
translation of its foreign currency operating results for external
reporting, is consistent with generally acceptable accounting
principles, and is approved and reviewed by Lilly's independent
certified public accountants.
To enable Lilly to comply with applicable tax laws and regulation,
Aurora shall provide to Lilly a report, within 60 days following the
close of each calendar year, detailing the dollar amount of the funds
that were expended on CSP research activities during the year for
which the report is made.
6.4. Records.
During the Royalty Term and for one (1) year from the date of each
payment of royalties, Lilly shall keep complete and accurate records of
sales and all other information necessary to calculate Net Sales of
each Covered Product in sufficient detail to allow the accrued
royalties to be determined accurately. Aurora, with reasonable written
notice to Lilly, shall have the right to cause Lilly's independent,
certified public accountant to audit such records at the place or
places of business where such records are customarily kept in order to
verify the accuracy of the reports of Net Sales and royalty payments.
Aurora shall bear the full cost of such audit unless such audit
discloses a variance of *** from the amount of the royalties due under
this Agreement, in which event, Lilly shall bear the full cost of such
audit. Aurora agrees not to disclose confidential information
concerning royalty payments and reports, and all information learned in
the course of any audit or inspection, except to the extent necessary
for Aurora to reveal such information in order to enforce its rights
under this Agreement or if disclosure is required by law. Upon
reasonable request of Aurora and at a minimum once every six (6)
months, Lilly shall provide Aurora
***CONFIDENTIAL TREATMENT REQUESTED
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with a summary of, Approved PTAC Compounds and Covered Products that
are required to calculate Royalties or Milestones.
7. INTELLECTUAL PROPERTY ENFORCEMENT AND DEFENSE OF INFRINGEMENT CLAIMS
7.1. Intellectual Property Enforcement.
Lilly and Aurora shall have the right, but not the obligation, to
bring proceedings against any Third Party for the inappropriate use,
including patent infringement, of Technology or Patent Rights solely
owned or Controlled by it, and at its own risk and expense. Such
party shall be entitled to retain any and all awards or damages
obtained in any such proceeding. At the request and expense of either
party, the other party shall give the requesting party all reasonable
assistance required to file and conduct any such proceeding. For
jointly owned Technology or Patent Rights, Lilly and Aurora shall use
their best efforts to coordinate pursuing a commercially reasonable
action to address inappropriate use, including patent infringement, by
Third Parties of such Technology and Patent Rights and to determine
how expenses and any recovery from such action shall be allocated
between the parties. Lilly, as a non-exclusive licensee, will make
reasonable efforts to provide Aurora with any information known to
Lilly relating to the suspected or actual inappropriate use, including
patent infringement, of Aurora Technology and Aurora Patent Rights.
7.2. Defense of Infringement Claims Pertaining to Lilly Hits,
Approved PTAC Compounds, and Covered Products.
Aurora will cooperate with Lilly, at Lilly's expense, in the defense
of any suit, action or proceeding against Aurora and its Affiliates,
or Lilly and its Affiliates alleging the infringement of the
intellectual property rights of a Third Party by reason of the
manufacture, use or sale of a Covered Product by Lilly. Lilly shall
give Aurora prompt written notice of the commencement of any such
suit, action, proceeding or claim of infringement. Aurora shall give
to Lilly all authority, information and assistance necessary to defend
or settle any such suit, action or proceeding; provided, however, that
if Aurora or its Affiliates or licensees should join in any such suit,
action or proceeding pursuant to this Section 7.2 and at the request
of ▇▇▇▇▇, ▇▇▇▇▇ shall hold Aurora or any such Aurora Affiliate or
licensee, as applicable, free, clear and harmless from any and all
costs and expenses of such litigation, including reasonable attorneys'
fees, and Aurora shall execute all documents, provide pertinent
records, and take all other actions, including
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requiring persons within its control to give testimony, which may be
reasonably required in connection with such litigation.
7.3. Defense of Infringement Claims Pertaining to Aurora Technology
and Aurora Patent Rights
Lilly will cooperate with Aurora, at Aurora's expense, in the defense
of any suit, action or proceeding against Aurora or Aurora Affiliate
alleging the infringement of the intellectual property rights of a
Third Party by reason of Aurora's use any of Aurora Patent Rights and
Aurora Technology licensed to Lilly under this Agreement. Aurora
shall give Lilly prompt written notice of the commencement of any such
suit, action, proceeding or claim of infringement. Lilly shall give
to Aurora all authority, information and assistance necessary to
defend or settle any such suit, action or proceeding; provided,
however, that if Lilly or its Affiliates or licensees should join in
any such suit, action or proceeding pursuant to this Section 7.3 and
at the request of Aurora, Aurora shall hold Lilly, or any such Lilly
Affiliate, free, clear and harmless from any and all costs and
expenses of such litigation, including reasonable attorneys' fees, and
Aurora shall execute all documents, provide pertinent records, and
take all other actions, including requiring persons within its control
to give testimony, which may be reasonably required in connection with
such litigation.
8. TREATMENT OF CONFIDENTIAL INFORMATION; PUBLICITY, AND CHANGE OF
CONTROL
8.1. Confidentiality
8.1.1. Subject to the terms and conditions of this
Agreement, Lilly and Aurora each agree that, during
the term of this Agreement and for five (5) years
thereafter, it will use all reasonable efforts to
keep confidential, and will cause its Affiliates to
use reasonable efforts to keep confidential, all
Aurora Confidential Information or Lilly Confidential
Information, as the case may be, that is disclosed to
it or to any of its Affiliates by the other party in
connection with the performance of this Agreement.
Neither Lilly nor Aurora nor any of their respective
Affiliates shall use the other party's Confidential
Information except as expressly permitted in this
Agreement.
8.1.2. Lilly and Aurora each agree that any disclosure of
the other's Confidential Information to any officer,
employee, contractor,
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consultant, sublicensee, or agent of the other party
or of any of its Affiliates shall be made only if and
to the extent necessary to carry out its
responsibilities under this Agreement and to exercise
the rights granted to it hereunder, shall be limited
to the extent consistent with such responsibilities
and rights, and shall be provided only to such
persons or entities who are bound to maintain same in
confidence in a like manner as the party receiving
same hereunder is so required. Each party shall use
reasonable efforts to take such action, and to cause
its Affiliates to take such action, to preserve the
confidentiality of each other's Confidential
Information, including not less than such efforts as
it would customarily take to preserve the
confidentiality of its own Confidential Information.
Lilly Confidential Information shall not be
disclosed, without Lilly's written consent, in a
patent application filed by Aurora or an Aurora
Affiliate. Aurora Confidential Information shall not
be disclosed, without Aurora's written consent, in a
patent application filed by Lilly or a Lilly
Affiliate. Each party, upon the other's request,
will return all the Confidential Information
disclosed to the other party pursuant to this
Agreement, including all copies and extracts of
documents, within sixty (60) days of the request of
the other party following any termination of this
Agreement, except for one (1) copy which may be kept
for the purpose of ascertaining and complying with
continuing confidentiality obligations under this
Agreement.
8.1.3. Confidential Information shall not include any
information which the receiving party can prove by
competent evidence:
i) is now, or hereafter becomes, through no act
or failure to act on the part of the receiving party,
generally known or available;
ii) is known by the receiving party at the
time of receiving such information, as evidenced
by its records;
iii) is hereafter furnished to the receiving party
without restriction as to disclosure or use by a
Third Party lawfully entitled to so furnish same;
iv) is independently developed by the employees,
agents or contractors of the receiving party without
the aid, application or use of the disclosing party's
Confidential Information; or
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v) is the subject of a written permission to
disclose provided by the disclosing party; or
vi) is provided by the disclosing party to a
Third Party without restriction as to
confidentiality.
A party may also disclose Confidential Information of
the other where required to do so by law or legal
process, provided that, in such event, the party
required to so disclose shall give maximum practical
advance written notice of same to the other party and
will cooperate with the other party's efforts to
seek, at the request and expense of the other party,
all confidential treatment and protection for such
disclosure as is permitted by applicable law.
The parties agree that the material financial terms
of this Agreement will be considered Confidential
Information of both parties. Notwithstanding the
foregoing, either party may disclose such terms in
legal proceedings or as are required to be disclosed
in its financial statements, by law, or under
strictures of confidentiality to bona fide potential
sublicensees. Either party shall have the further
right to disclose the material financial terms of
this Agreement under strictures of confidentiality to
any potential acquirer, merger partner, bank, venture
capital firm, or other financial institution to
obtain financing; provided, further, that either
party shall have the right to disclose the material
financial terms of this Agreement under strictures of
confidentiality to any bona fide potential strategic
partner or collaborator with the prior written notice
of the other.
8.2. Publication of Results
Notwithstanding any term in this Agreement that may state or imply to
the contrary, but subject to Section 8.1 hereof, results and data
obtained by Lilly in the course of the Collaborative Screening Program
and Lilly Screen Program or through Lilly's use of the Aurora
Reporters or the LILLYUHTSS may be submitted for publication in
accordance with Lilly's customary practices, provided, however, that
Lilly credit Aurora in such publication as the provider of the
technology that produced, in part, the published results or data.
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8.3. Publicity
Except as required by law and as provided in this Section 8, neither
party may make any public announcement or otherwise disclose the terms
of this Agreement without the prior written consent of the other
party, which consent shall not be unreasonably withheld.
9. PATENT PROSECUTION AND COPYRIGHTS
9.1. Patents.
The control and expense of the filing, prosecution (including an
opposition or interference) and maintenance of applications claiming
jointly owned Inventions will be equally shared by Lilly and Aurora.
Both Aurora and Lilly will use their best efforts to coordinate the
filing prosecution and maintenance of applications claiming jointly
owned Inventions. Should one party elect not to share in the control,
filing, prosecution or maintenance of such applications, the other
party with thirty (30) days written notice may elect to gain sole
control of the filing, prosecution or maintenance of such application
or applications and have sole responsibility for prosecution or
maintenance expenses. The control and expense of the filing,
prosecution (including an opposition or interference) and maintenance
of applications claiming solely owned Inventions will be at the
discretion of the owner. At Lilly's reasonable request, not to exceed
more than one request every three months, Aurora shall timely provide
to Lilly updates regarding the patent applications related to Aurora
Patent Rights licensed under Section 5.1.
9.2. Copyrights
The parties agree to treat and handle, to the maximum practical
extent, any copyrights owned or Controlled by a party in the same
manner as Patent Rights owned or Controlled by such party.
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10. WARRANTIES AND INDEMNIFICATION.
10.1. Mutual Representations and Warranties
The parties make the following representations and warranties to each
other:
10.1.1. Corporate Power.
Each party hereby represents and warrants that such party (a)
is duly organized and validly existing under the laws of the
state of its incorporation and has full corporate power and
authority to enter into this Agreement and to carry out the
provisions hereof; (b) has the requisite power and authority
and the legal right to own and operate its property and
assets, to lease the property and assets it operates under
lease, and to carry on its business as it is now being
conducted; and (c) is in compliance with all requirements of
applicable law, except to the extent that any noncompliance
would not have a material adverse effect on the properties,
business, financial or other condition of it and would not
materially adversely affect its ability to perform its
obligations under the Agreement.
10.1.2. Due Authorization.
Each party hereby represents and warrants that such party (a)
has the requisite power and authority and the legal right to
enter into the Agreement and to perform its obligations and
grant the rights extended by it hereunder; and (b) has taken
all necessary action on its part to authorize the execution
and delivery of the Agreement and to authorize the performance
of its obligations hereunder and the grant of rights extended
by it hereunder.
10.1.3. Binding Agreement.
Each party hereby represents and warrants to the other that:
(a) this Agreement has been duly executed and delivered on its
behalf and is a legal and valid obligation binding upon it and
is enforceable in accordance with its terms; (b) the
execution, delivery and performance of this Agreement by such
party does not conflict with any agreement, instrument
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or understanding, oral or written, to which it is a party or
by which it may be bound, nor violate any law or regulation of
any court, governmental body or administrative or other agency
having authority over it; and (c) all necessary consents,
approvals and authorizations of all governmental authorities
and other persons required to be obtained by it in connection
with the Agreement have been obtained.
10.2 Warranties and Aurora Technology.
Aurora warrants to Lilly as of the Effective Date the following:
10.2.1. To the best knowledge of Aurora ***
10.2.2. Except as set forth in Section 10.2.1 above,
Sections 3.1 and 3.2 relating to
Collaborative Screening Programs and Lilly
Screening Programs and Section 2 relating to
LILLYUHTSS, Aurora (including its officers,
employees and agents) expressly disclaim any
representations and warranties, whether
express or implied, relating to Aurora Patent
Rights and Aurora Technology. Aurora further
disclaims i) any express or implied warranty
of merchantability or fitness for a
particular purpose of Aurora Technology
except as set forth in Sections 2 and 3 to
Collaborative Screening Programs and
LILLYUHTSS, ii) practice of Aurora
Technology or Aurora Patent Rights will not
infringe a patent, copyright, trademark or
other right of a Third Party, and iii) the
patentability of any Aurora Technology,
including Aurora Technology claimed in patent
applications as part of Aurora Patent Rights.
10.3. Aurora Indemnification.
*** CONFIDENTIAL TREATMENT REQUESTED
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Aurora hereby agrees to indemnify, defend and hold Lilly and its
Affiliates, and their respective officers, directors, employees, and
agents (collectively, the "Lilly Indemnitees") harmless from and
against all damages or other amounts payable to a Third Party,
including reasonable attorneys' fees and costs of litigation, resulting
from a suit brought by a Third Party against a Lilly Indemnitee for (i)
*** except to the extent such damages or other amounts payable are
attributable to: (i) a violation of law, regulation or court order by
any Lilly Indemnitee, (ii) a violation of any contractual or fiduciary
duty owned by any Lilly Indemnitee to a Third Party, (iii) the
misappropriation by any such Lilly Indemnitee of the trade secrets of
any Third Party, (iv) any negligent or wrongful act or omission of any
Lilly Indemnitee, (v) any *** or (vi) any breach of this Agreement by a
Lilly Indemnitee or misrepresentation contained herein. In no event
shall Aurora be liable for any incidental or consequential damages
resulting from the exercise of any rights granted in accordance with
this Agreement.
10.4. Warranties and Lilly Technology.
----------------------------------------
Lilly warrants to Aurora as of the Effective Date the following:
10.4.1. To the best knowledge of Lilly as of the Effective
Date, Lilly has the lawful right to license to Aurora
in accordance with this Agreement Lilly Patent Rights
To the best knowledge of Lilly as of the Effective
Date, Lilly Patent Rights were properly filed and
prosecuted and no Third Party suit
exists relating to Lilly Patent Rights.
10.4.2. Except as set forth in Section 10.4.1 above, Sections
3.1 and 3.2 relating to Collaborative Screening
Programs and Lilly Screening Programs and Section 2
relating to LILLYUHTSS, Lilly (including its
officers, employees and agents) expressly disclaim
any representations and warranties, whether express
or implied, relating to Lilly Patent Rights and Lilly
Technology. Lilly further disclaims i) any express or
implied warranty of merchantability or fitness for a
particular purpose of Lilly Technology except as set
forth in Sections 2 and 3 relating to Collaborative
Screening Programs and LILLYUHTSS, ii) practice of
Lilly Technology or
*** CONFIDENTIAL TREATMENT REQUESTED
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Lilly Patent Rights will not infringe a patent,
copyright, trademark or other right of a Third Party,
and iii) the patentability of any Lilly Technology,
including Lilly Technology claimed in patent
applications as part of Lilly Patent Rights.
10.5. Lilly Indemnification.
Lilly hereby agrees to indemnify, defend and hold Aurora and
its Affiliates, and their respective officers, directors,
employees, and agents (collectively, the "Aurora Indemnitees")
harmless from and against all damages or other amounts payable
to a Third Party, including reasonable attorneys' fees and
costs of litigation, resulting from a suit brought by a Third
Party against a Aurora Indemnitee ***; except to the extent
such damages or other amounts payable are attributable to: (i)
a violation of law, regulation or court order by any Aurora
Indemnitee, (ii) a violation of any contractual or fiduciary
duty owed by any Aurora Indemnitee to a Third Party, (iii) the
misappropriation by any such Aurora Indemnitee of the trade
secrets of any Third Party, (iv) any negligent or wrongful act
or omission of any Aurora Indemnitee, (v) any infringement of
any third party intellectual property rights by Aurora or any
Aurora Affiliate, or (vi) any breach of this Agreement by an
Aurora Indemnitee or misrepresentation contained herein. In no
event shall Lilly be liable for any incidental or consequential
damages resulting from the exercise of any rights granted in
accordance with this Agreement.
11. TERM, PARTIAL PERFORMANCE AND TERMINATION.
11.1. Term.
The term of this Agreement will begin on the Effective Date and shall
continue, unless terminated in accordance with the provisions of
Sections 11.2-11.4 hereof, until the later of: (i) the last to expire
Royalty Term; or (ii) Lilly is no longer making payment for Aurora
Reporters under Section 2.1.8.
*** CONFIDENTIAL TREATMENT REQUESTED
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11.2. Termination By Mutual Agreement.
----------------------------------------
The parties may at any time terminate this Agreement, in whole or in
part, by written agreement executed by both Aurora and Lilly. In such
event, the document effecting such termination shall specify the
continuation or termination of any license rights granted hereunder,
as well as any other terms agreed to by both parties.
11.3. Termination Without Cause by Lilly.
-------------------------------------------
Lilly may elect at any time set forth in accordance with this
Agreement to terminate this Agreement for any reason without cause,
provided, however, that Lilly provide Aurora with written notice at
least forty-five (45) days prior to such termination. In the event of
termination without cause by Lilly:
11.3.1. Lilly shall either: (i) pay to Aurora within thirty
days of such notice an amount equal to *** ***
***; or (ii) pay to Aurora within thirty days of such
notice an amount equal to the ***
*** CONFIDENTIAL TREATMENT REQUESTED
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*** . In addition to payments made under Section
11.3.1 (i) and Section 11.3.1 (ii), Lilly shall also
pay to Aurora within thirty days of such notice ***
11.3.2. Upon termination of this Agreement without cause by
Lilly, all licenses and sublicenses granted in
accordance with this Agreement shall be terminated
and all Materials transferred in accordance with this
Agreement shall be returned to Aurora or destroyed at
the discretion of Aurora by Lilly; provided, however,
Lilly shall be entitled i) to use thereafter in
Internal Research Completed components of the
LILLYUHTSS that (a) Lilly has determined to be
Completed for at least 60 days prior to written
notice of such termination and to which Lilly has
made the payments required under Section 2 and (b)
to which Lilly has made payments required under
Section 11.3.1 (ii) hereof and ii) to exercise a
nonexclusive, irrevocable, and fully paid-up right
and license under any Aurora UHTSS Patent Rights and
Aurora UHTSS Copyrights existing as of the date of
such written notification of Lilly's termination
without cause or provided under Section 11.3.1 (ii).
11.4. Partial Performance.
----------------------------
Lilly and Aurora agree that Aurora may, under certain circumstances,
partially perform under this Agreement, without terminating the
Agreement, as set forth below:
11.4.1. In the event that Aurora is i) unable to deliver to
Lilly the LILLYUHTSS by the Target Delivery Date as
specified in Section 2.1.2.1 or ii) Aurora is unable
to Complete a Module as specified in Section 2.1.3,
Aurora shall permit Lilly to continue to use the
rights granted in accordance with this Agreement to
conduct the Collaborative Screening Program and the
Lilly Screening Program, so long as Lilly has no
outstanding payments to Aurora, and Lilly continues
to permit Aurora to cure the delivery of the
LILLYUHTSS by the Target Delivery Date as specified
in Section 2.1.2.1 or the Completion of a Module as
specified in Section 2.1.3 and Lilly notifies in
writing Aurora within 30 days of such partial
*** CONFIDENTIAL TREATMENT REQUESTED
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performance that it desires Aurora to cure under this
Section 12.2.3.
11.5. Termination for Cause.
Either party shall have the right to terminate this Agreement at any
time for a material breach of this Agreement by the other party,
provided that the non-breaching party shall have given the breaching
party (90) days written notice of the breach and intention to
terminate this Agreement in the absence of a cure within ninety (90)
days of receipt of such notice by the beaching party. Upon
termination of this Agreement for cause, all licenses and sublicenses
granted in accordance with this Agreement shall be terminated and all
Materials transferred in accordance with this Agreement shall be
returned to the supplying party or destroyed at the discretion of such
party. The non-breaching party, upon termination of this Agreement
may seek actual or general damages and remedies available to it at law
or in equity.
11.6. Effect of Bankruptcy
If a party becomes insolvent or admits in writing its inability to pay
its debts as they mature or applies for or consents to the appointment
of a receiver or trustee for any of its properties; or a receiver or
trustee is appointed for such party or a substantial portion of its
properties and is not discharged within ninety (90) days; or any
bankruptcy, reorganization, debt arrangement, dissolution, liquidation
or other proceeding under any bankruptcy or insolvency law is
instituted by or against such party and, if instituted against such
party, it is consented to by such party or remains undismissed for
ninety (90) days, then
11.6.1. Notwithstanding any such event, such party shall
remain obligated to fulfill its obligations and
covenants hereunder, and any failure to do so or
other breach hereunder shall entitle the other party
to terminate this Agreement in accordance with
Section 12.3 hereof; and
11.6.2. It is the parties desire that, if any such receiver,
trustee, judge, arbitrator or other adjudicator
conducting or controlling such proceedings on behalf
of a party should hold that any obligations,
covenants or duties of such party hereunder should be
suspended or declared unenforceable, in whole or in
part, then the rights and benefits granted to the
other party hereunder shall remain in full force and
effect, and that any such obligations, covenants or
duties
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shall be reformed by such receiver, trustee, judge,
arbitrator or other adjudicator so as to be
enforceable to the maximum extent permitted by
applicable law and to permit any suspension to be
lifted at the earliest practicable time.
11.7. Effect of Expiration or Termination
11.7.1. Expiration or termination of this Agreement shall not
relieve the parties of any obligation accruing prior
to such expiration or termination. The obligations
and rights of the parties under Sections 3.1.5 to
3.2.3, 6.0, 8.0, 9.0, 12.0, and 13.0 thereof, as well
as any provisions, which, by their intent or meaning
are intended to so survive, shall survive termination
or expiration of this Agreement. Except as otherwise
expressly provided in this Agreement, the rights and
obligations of the parties under Sections 5.1, and
5.2 hereof shall terminate and be of no further force
or effect whatsoever upon any termination of this
Agreement.
12. MISCELLANEOUS
12.1. Assignment.
Notwithstanding any provision of this Agreement to the contrary,
either party may assign any of its rights or obligations under this
Agreement in any country to any Affiliates; provided, however, that
such assignment shall not relieve the assigning party of its
responsibilities for performance of its obligations under this
Agreement.
Either party may also assign its rights or obligations under this
Agreement in connection with the sale of all or substantially all of
its assets, or may otherwise assign its rights or obligations under
this Agreement with the prior written consent of the other party.
This Agreement shall survive any merger or consolidation of either
party with or into another party and no consent for any such merger,
consolidation or similar reorganization shall be required hereunder;
provided, that in the event of such merger, consolidation or similar
reorganization or in the event of a sale of all assets, no
intellectual property rights of the acquiring corporation shall be
included in the technology licensed hereunder.
12.2. Binding Effect.
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This Agreement shall be binding upon and inure to the benefit of the
successors and permitted assigns of the parties. Any assignment not
in accordance with this Agreement shall be void.
12.3. Force Majeure.
Neither party shall lose any rights hereunder or be liable to the
other party for damages or losses on account of failure of performance
by the defaulting party if the failure is occasioned by war, fire,
explosion, flood, strike, lockout, embargo, act of God, or any other
similar cause beyond the control of the defaulting party, provided
that the party claiming force majeure has exerted all reasonable
efforts to avoid or remedy such force majeure and thereafter takes all
reasonable steps to mitigate any such delay in performance hereunder
and any damages that may be incurred by the other party thereby.
12.4. Notices.
Any notices or communications provided for in this Agreement to be
made by either of the parties to the other shall be in writing, in
English, and shall be made by prepaid air mail with return receipt
addressed to the other at its address set forth below. Any such
notice or communication may also be given by hand, or
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facsimile to the appropriate designation. Notices shall be sent:
If to Lilly, to: ▇▇▇ ▇▇▇▇▇ and Company
Lilly ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Vice President of Research Technologies and Proteins
Copy: General Patent Counsel
If to Aurora, to: Aurora Biosciences Corporation.
▇▇▇▇▇ ▇. ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇, M.D., Sc.D.
Chairman, CEO, and President
Copy: ▇▇▇▇ ▇▇▇▇▇▇▇
Director, Business Development
provided that if such notice or communication relates to an amendment
to this Agreement or to any notice pursuant to Section 11 hereof, a
copy shall also be sent to:
If to Lilly, to: ▇▇▇ ▇▇▇▇▇ and Company
Lilly ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Executive Vice President, Science and Technology
Copy: General Patent Counsel
If to Aurora, to: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇, M.D., Sc.D.
Chairman, CEO, and President
Copy: ▇▇▇▇ ▇▇▇▇▇▇▇
Director, Business Development
Either party may by like notice specify or change an address to which
notices and communications shall thereafter be sent. Notices sent by
mail, facsimile or cable shall be effective upon receipt and notices
given by hand shall be effective when delivered.
12.5. Governing Law and Jurisdiction.
This Agreement shall be governed by the laws of the State of
California, as such laws are applied to contracts entered into and to
be performed within such state.
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Any dispute arising from this Agreement, including non-binding
arbitration or litigation, shall be resolved in Denver, Colorado.
12.6. Waiver.
Except as specifically provided for herein, the waiver from time to
time by either of the parties of any of their rights or their failure
to exercise any remedy shall not operate or be construed as a
continuing waiver of same or any of other of such party's rights or
remedies provided in this Agreement.
12.7. Severability.
If any term, covenant or condition of this Agreement or the
application thereof to any party or circumstance shall, to any extent,
be held to be invalid or unenforceable, then the remainder of this
Agreement, or the application of such term, covenant or condition to
parties or circumstances other than those as to which it is held
invalid or unenforceable, shall not be affected thereby and each term,
covenant or condition of this Agreement shall be valid and be enforced
to the fullest extent permitted by law; and the parties hereto
covenant and agree to renegotiate any such term, covenant or
application thereof in good faith in order to provide a reasonably
acceptable alternative to the term, covenant or condition of this
Agreement or the application thereof that is invalid or unenforceable,
it being the intent of the parties that the basic purposes of this
Agreement are to effectuated.
12.8. Independent Contractors.
It is expressly agreed that Aurora and Lilly shall be independent
contractors and that the relationship between the two parties shall
not constitute a partnership or agency of any kind. Neither Aurora
nor Lilly shall have the authority to make any statements,
representations or commitments of any kind, or to take any action,
which shall be binding on the other, without the prior written
authorization of the party to do so.
12.9. Counterparts
This Agreement shall be executed in two (2) counterparts, each of
which shall be deemed an original, but both of which together shall
constitute one and the same instrument.
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12.10. Entire Agreement
This Agreement between the parties of even date herewith set forth all
of the covenants, promises, agreements, warranties, representations,
conditions and understandings between the parties hereto, and
supersede and terminate all prior agreements and understanding between
the parties, with respect to the subject matter hereof. There are no
covenants, promises, agreements, warranties, representations
conditions or understandings, either oral or written, between the
parties other than as set forth herein and therein. No subsequent
alteration, amendment, change or addition to this Agreement shall be
binding upon the parties hereto unless reduced to writing and signed
by the respective authorized officers of the parties. This Agreement
shall not be strictly construed against either party hereto. Any
conflict between the terms set forth in the text of this Agreement and
the terms of any Exhibit hereto shall be resolved in favor of the text
of this Agreement.
12.11. No Third Party Beneficiaries.
No third party, including any employee of any party to this Agreement,
shall have or acquire any rights by reason of this Agreement. Nothing
contained in this Agreement shall be deemed to constitute the parties
partners with each other or any third party.
12.12. Construction.
The term "Section" can refer to any single paragraph level found
herein or any collection of multiple paragraphs.
12.13. Dispute Resolution.
The parties recognize that disputes as to certain matters may from
time to time arise during the term of this Agreement which relate to
either party's rights and/or obligations hereunder. It is the
objective of the parties to establish procedures to facilitate the
resolution of disputes arising under this Agreement in an expedient
manner by mutual cooperation and without resort to litigation or
arbitration. The parties agree that prior to any litigation or
arbitration concerning this Agreement, Lilly's Executive Vice
President of Science and Technology and Aurora's
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president will meet in person or by video-conferencing in a good faith
effort to resolve any disputes concerning this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives.
▇▇▇ ▇▇▇▇▇ AND COMPANY AURORA BIOSCIENCES
CORPORATION
By: By:
---------------------------------------- ----------------------------------------
Title: Title:
------------------------------------- -------------------------------------
Date: Date:
-------------------------------------- --------------------------------------
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LIST OF EXHIBITS
EXHIBIT 1.0: PROJECT TEAM APPROVAL COMMITTEE (PTAC) INFORMATION
EXHIBIT 1.1: PERFORMANCE SPECIFICATIONS
EXHIBIT 1.2: EXHIBIT OF REPORTERS
EXHIBIT 4.1: SERVICE AND SUPPORT
EXHIBIT 5.1: LIST OF AURORA PATENT RIGHTS
EXHIBIT 5.2: OTHER AURORA PATENT RIGHTS
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EXHIBIT 1.0
PROJECT TEAM APPROVAL COMMITTEE (PTAC) INFORMATION
I. ***
II. ***
PROJECT TEAM APPROVAL COMMITTEE (PTAC) INFORMATION
I. ***
II. ***
III. ***
IV. ***
V. ***
*** CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 1.1 - PAGE 1
PERFORMANCE SPECIFICATIONS
MODULE 1 AUTOMATED SAMPLE PRESENTATION SYSTEM (ASPS)
***
*** CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 1.1 - PAGE 2
PERFORMANCE SPECIFICATIONS
MODULE 2
MICROFLUIDICS
***
*** CONFIDENTIAL TREATMENT REQUESTED
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***
*** CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 1.1 - PAGE 3
PERFORMANCE SPECIFICATIONS
MODULE 2
DETECTOR (CONTINUED)
***
UHTSS ASSAY TYPES
***
SCREEN DEVELOPMENT STAGE ("SDS")
***
*** CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 1.1 - PAGE 4
PERFORMANCE SPECIFICATIONS
MODULE 3 (INTEGRATION, INFORMATICS AND CONTROL SYSTEMS)
***
***CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 1.2
DESCRIPTION OF REPORTERS
***
***CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 4.1
SERVICE AND SUPPORT
***
*** CONFIDENTIAL TREATMENT REQUESTED
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***
*** CONFIDENTIAL TREATMENT REQUESTED
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***
*** CONFIDENTIAL TREATMENT REQUESTED
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***
*** CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 5.1
LIST OF AURORA PATENT RIGHTS
***
*** CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT 5.2
OTHER AURORA PATENT RIGHTS
***
*** CONFIDENTIAL TREATMENT REQUESTED
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