exv10w18






[***] Indicates text has been omitted from this Exhibit pursuant to a confidential treatment
request and has been filed separately with the Securities and Exchange Commission.








Exhibit 10.18




HARVARD UNIVERSITY

Office for Technology and Trademark Licensing




			
	 	 	 
	Holyoke Center, Suite 727

1350 Massachusetts Avenue 

Cambridge, MA 02138 USA
	 	t.[***]

f.[***]

www.techtransfer.harvard.edu






December 22, 2004




William M. Smith

Vice President, Legal Affairs

Fluidigm Corporation

7100 Shoreline Court

South San Francisco, CA 94080





			
	Subject:	 	Letter Agreement between Fluidigm and Harvard Concerning
Harvard Case Numbers [***]




Dear Bill,



Fluidigm Corporation (Fluidigm) has licensed a number of Harvard University (Harvard) owned
patents and patent applications in the area of [***]. In particular,
on
October 15, 2000, Fluidigm (then known as Mycometrix Corporation) licensed Harvard Case
Numbers [***], all exclusively or co-
exclusively. Fluidigm has since terminated the license to Case Numbers [***],
and the parties have mutually agreed in this letter to hereby terminate Fluidigm’s
licenses to Case Numbers [***]. Fluidigm is retaining its licenses to Case
Numbers [***].



Fluidigm is concerned that Harvard or a licensee of Harvard may file claims in the previously or
hereby terminated Case Numbers [***] or [***] that cover inventions that are not
separately patentable (as described in 37 CFR 1.601(n)) from inventions covered, as of the date
of this letter, by the pending or issued claims in Case Numbers [***]. Fluidigm
further is concerned that Harvard or a licensee of Harvard may file claims in the previously or
hereby terminated Case Numbers [***] that (a) cover inventions that (i) are
separately patentable (as described in 37 CFR 1.601(n)) from inventions covered, as of the date
of this letter, by the pending or issued claims in Case Numbers [***], and
(ii) would meet the criteria of 35 USC §§102, 103 and 112 for patentability in Case
Numbers [***], and (b) are not now pending in any of Case Numbers [***].
Fluidigm believes it has rights (through its co-exclusive license
agreements to Case Numbers [***],)) to the not separately patentable inventions
and the separately patentable inventions, each as described above. Harvard is willing to address
Fluidigm’s concerns through this letter agreement.



Therefore, Harvard and Fluidigm agree as follows:





	A)	 	Harvard agrees not to file, or to permit any other to file, claims in the previously or
hereby terminated Case Numbers [***], that cover inventions
that are not



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		 	separately patentable (as described in 37 CFR 1.601(n)) from inventions covered, as of
the date of this letter, by the pending or issued claims in Case Numbers [***],
without the prior express written consent of Fluidigm given after the date of this
letter.
	 
	B)	 	Harvard agrees to first offer to Fluidigm for licensing any claims, filed after the date of
this letter, in Case Number [***] that (a) cover inventions that (i) are separately
patentable (as described in 37 CFR 1.601(n)) from inventions covered, as of the date of
this letter, by the pending or issued claims in Case Numbers [***], and
(ii) would meet the criteria of 35 USC §§102, 103 and 112 for patentability in Case
Numbers [***], and (b) are not now pending in any of Case Numbers [***].
Fluidigm agrees to inform Harvard within one month
after Fluidigm receives express written notice form Harvard of the existence of said
claims (together with a copy of such claims) whether it desires a license to said claims, or
else Harvard shall be free to license them to other parties. Any license agreement
between Fluidigm and Harvard for said claims shall be negotiated in good faith by the
parties, have a field no broader than that now pending in Fluidigm’s license to Case [***],
have commercially reasonably royalties and be substantially like Harvard’s then current
license agreement with diligence requirements based on an acceptable development plan
provided by Fluidigm; provided, however, if the parties have not entered into such
license agreement within [***] after Fluidigm receives express written notice
from Harvard of the existence of the applicable claims (together with a copy of such
claims), then any license agreement between Fluidigm and Harvard for said claims shall
be on the same terms and conditions, and in the same form, as the parties’ license
agreements with respect to Case Numbers [***], (as in effect as of the date
of this letter), except that the license will be a non-exclusive license.
	 
	C)	 	Harvard represents that all patent applications in Case Numbers [***] have been
abandoned as of the date of this letter. Harvard agrees not to revive any such patent
application or to file any other patent application under Case Number [***].
	 
	D)	 	Fluidigm agrees to pay [***] of Harvard’s reasonable out-of-pocket patent
expenses, incurred after the date of this letter agreement, in Case Number [***], and
within [***] of receiving an invoice from Harvard, up to a maximum aggregate
amount of [***]. Harvard agrees to inform Fluidigm if any US patent or patent
application in Case Number [***] becomes involved in an interference proceeding in the
US Patent and Trademark Office before Harvard has incurred any expense to allow
Fluidigm to terminate this letter agreement.
	 
	E)	 	The parties mutually agree that the license to Case Numbers [***] hereby are
terminated, and in connection therewith, promptly following the first meeting of the
Board of Directors of Fluidigm after such date, Fluidigm shall issue to Harvard [***]
of Common Stock of Fluidigm. Fluidigm represents that, in its last institutional
round of financing, Fluidigm sold shares of its Series D Preferred Stock at a price of
$2.80 per share. Harvard makes to Fluidigm, as of the date of the issuance of such [***],
the same representations and warranties with respect to such shares as those
representations and warranties set forth in Paragraph 4.2(c)(ii)(1), (2) and (3) of the




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	 	 	license for Case Number [***] regarding the Shares. Paragraphs 4.2(c)(iii) and (iv) of the
license for Case Number [***] shall apply as well to such [***].
	 
	 	 	Fluidigm may terminate this Letter Agreement in writing with thirty (30) days written
notice to Harvard and owe no patent expenses incurred by Harvard in Case Number [***]
after said thirty day notice period.
	 
	F)	 	Harvard may terminate this Letter Agreement for any material breach by Fluidigm of its
obligations under Paragraphs (D) or (E) of this letter if Harvard gives express written
notice to Fluidigm of such breach and such breach is not cured within thirty (30) days
after Fluidigm’s receipt of such notice.
	 
	G)	 	Any disputes between the parties regarding this letter shall be resolved in the same
manner as disputes are resolved under Fluidigm’s licenses to Case Numbers [***].
	 
	H)	 	The parties acknowledge that each party may currently have a different interpretation of
certain aspects of the three remaining license agreements. With respect to the three
remaining license agreements, the provisions of this letter are intended by the parties
solely to provide specific protective mechanisms regarding the subject matter licensed by
Harvard to Fluidigm. This letter shall not prejudice either parties’ interpretation or intent
of the three remaining license agreements, and is not intended to constitute the parties’
interpretation of the three remaining license agreements (including the original intent
thereof).





Sincerely,










	 	 	 	 	 	 	 
	/s/ Robert Benson
	 	 	 		 	 
	Robert Benson, PhD

Associate Director

	 	 	 		 	 





Agreed to:




	 	 	 	 	 	 	 
	PRESIDENT AND FELLOWS

	 	 	 	Fluidigm Corporation:	 	 
	OF HARVARD COLLEGE:
	 	 	 	 	 	 
	 
	 	 	 	 	 	 
	/s/ Robert Benson for
 


	 	 	 	/s/ Gajus Worthington
 

	 	 
	Joyce Brinton

	 	 	 	Signature	 	 
	Director
	 	 	 	 	 	 
	Office for Technology and
Trademark Licensing

	 	 	 	President and CEO

Title	 	 
	 
	 	 	 	 	 	 
	Date: Dec. 23, 2004

	 	 	 	Date: 12/23/04	 	 







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