Exhibit
10.25


 


HIGHLY
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VERSION


 


REAL-TIME INSTRUMENT PATENT LICENSE AGREEMENT


 


This REAL-TIME INSTRUMENT
PATENT LICENSE AGREEMENT (the “Agreement”) is entered into and made effective
as of the 25th of April, 2006 (the “Effective Date”)
by and among BECKMAN COULTER, INC., a Delaware corporation with its principal
offices located at 4300 North Harbor Boulevard, Fullerton, California 92835
(the “Licensee”), and APPLERA
CORPORATION, a Delaware Corporation, through its APPLIED BIOSYSTEMS group
located at 850 Lincoln Centre Drive, Foster City, California 94404, and its
CELERA GENOMICS group, located at 45 West Gude Drive, Rockville, Maryland 20850
(“Licensor”). Each of the parties to this
Agreement shall be referred to individually as a “Party” and collectively as the “Parties”.


 


WHEREAS, Licensee initiated a civil action in
the United States District Court for the Central District of California against
Applera Corporation on July 2, 2002, entitled Beckman Coulter, Inc.
v. Applera Corporation, SA CV 02-624 MRP (AN) (the “Patent Lawsuit”), in which
Licensee alleged infringement of certain patents owned by Licensee;


 


WHEREAS, Applera Corporation (“Applera”)
initiated a civil action in the Superior Court of California for the County of
San Francisco against Licensee on February 7, 2005, entitled Applera
Corporation v. Beckman Coulter, Inc., Case No. 05-438449
(collectively with the Patent Lawsuit, the “Lawsuits”) in which Applera alleged
that, contrary to Licensee’s obligations under a November 6, 1996
sublicense agreement between The Perkin-Elmer Corporation and Beckman
Instruments, Inc. (the “Sublicense Agreement”), Licensee failed to remit
certain monies owed to Applera under the Sublicense Agreement;


 


WHEREAS, without any admission of liability with
regards to the claims and counterclaims raised in the Lawsuits, the Parties
have executed, on even date herewith, that certain Settlement Agreement to
settle the Lawsuits to make a full and final compromise, settlement and release
of the claims and demands asserted, or that could have been asserted, by the
Parties in the Lawsuits (the “Settlement Agreement”);


 


WHEREAS, pursuant to the Settlement
Agreement, the Parties agreed to enter into certain other agreements, including
this Agreement, that are ancillary to the Settlement Agreement;


 


WHEREAS, Licensor owns U.S. Patent No. 6,814,934,
and other U.S. and non-U.S. patents and applications that claim priority from
United States application Serial No. 07/965,201, including European Patent
No. EP 872562 and Japanese Patent No. JP 3136129, that describe and
claim automated thermal cycling apparatus capable of performing and detecting
nucleic acid amplification in real time;


 


WHEREAS, Licensor owns U.S. Patents Nos.
5,038,852 and 5,333,675, describing and claiming automated apparatus suitable
for performing the PCR process, and apparatus claims in corresponding
counterpart patents and patent applications in other countries;


 


WHEREAS, Licensor owns U.S. Patent Nos.
5,475,610, 6,703,236 B2, and U.S. Patent Application Ser. No. 10/691,186
(Publication No. 2004/0248146 A2), describing and claiming improvements in
thermal cycling apparatus for PCR, including methods comprising calculating
sample temperatures (algorithm claims) and a pressing heated cover, and corresponding
counterpart patents and patent applications in other countries;


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 

















 


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WHEREAS, Licensor owns U.S. Patent No. 5,656,493,
describing and claiming an amplification system comprising PCR reagents and a
thermal cycler programmed to carry out a PCR protocol;


 


WHEREAS, Licensor owns patents and
applications outside the U.S. that claim priority of U.S. application Serial No. 06/899,061
(filed in 1986) and that claim automated performance of the PCR process using
certain programmed thermal cyclers; and


 


WHEREAS, Licensee has requested and Licensor
is willing to grant Licensee a license, pursuant to the terms and conditions
herein, under said patent rights worldwide.


 


NOW, THEREFORE, in consideration of the
premises and the mutual covenants and promises contained herein, and for other
good and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged by the Parties, the Parties, intending to be legally bound, hereby
covenant and agree as follows:


 


1                                        Definitions


 


For the purpose of this Agreement the terms
set forth hereinafter shall be defined as follows:


 


1.1                                “Affiliate” shall mean, with respect to a
Party, any corporation or other entity that is directly or indirectly
controlled by, under common control with, or that controls such Party. For the
avoidance of doubt, any such corporation or other entity shall cease to be an “Affiliate”
of such Party under this Agreement when such corporation or other entity is no
longer directly or indirectly controlled by, under common control with, or
controlling such Party. For purposes of this definition, “controls,” “control”
and “controlling” mean the direct or indirect ownership or control (whether
through contract or otherwise) of more than fifty percent (50%) of the stock or
shares entitled to vote for the election of directors in the case of corporate
entities and in the case of non-corporate entities, more than fifty percent
(50%) of the equity interest with the power to direct management policies;
provided that, if local law restricts the maximum ownership interest of foreign
interests to less than fifty percent (50%), control will be established by
direct or indirect beneficial ownership of one hundred percent (100%) of the
maximum ownership percentage that may be owned by foreign interests under such
local law.


 


1.2                                “Algorithm
and Heated Cover Patent Rights” shall mean (a) Valid Claims of
U.S. Patent Nos. 5,475,610 and 6,703,236, and Valid Claims of U.S. Patent
Application Publication No. U.S. 2004/0248146 A2, and (b)  any Valid
Claims in foreign patents and patent applications that claim priority from any
of the applications for patent that resulted in U.S. Patent No. 5,475,610,
or U.S. Patent No. 6,703,236, and U.S. Patent Application Publication No. U.S.
2004/0248146 A2.


 


1.3                                “Amplification
System Patent Rights” shall mean (a) Valid Claims of U.S.
Patent No. 5,656,493 and (b) any Valid Claims in any foreign patent
or patent application that claim priority from any of the applications for
patent that resulted in U.S. Patent No. 5,656,493.


 


1.4                                “Applied Markets” shall mean (a) quality
assurance and quality control, including, without limitation, conformance with
specifications, purity and batch to batch consistency; (b) testing and
monitoring of environmental and food samples; (c) identity 


 


[***] indicates material that has been omitted pursuant to a request
for confidential treatment. The omitted material has been filed separately with
the Securities and Exchange Commission.


 


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testing (including, without limitation, for humans, animals, plants,
organisms, microbes or their remains); (d) epidemiology; and (e) biosecurity.


 


1.5                                “Automated
Method Patent Rights” shall mean automated method Valid Claims in
Licensor’s patents and patent applications outside the U.S. that claim priority
from U.S. Application Serial No. 899,061.


 


1.6                                “Covenanted
Patents” shall mean (a) Valid Claims of U.S. Patent Nos. [***]
and [***], (b) any Valid Claims in any foreign patent or patent
application thereof that claim priority from any of the applications for patent
that resulted in U.S. Patent No. [***] or [***], and (c) any
continuations, continuations-in-part (but only to the extent of any claims
therein that claim priority from any of the foregoing in parts (a) and (b) above),
divisionals, reissues, re-examinations, extensions, provisionals, substitutes
or renewals of any of the foregoing in parts (a) and (b) above, but
only to the extent any of the foregoing claims any instrument, process or
system, and all patents issuing from any of the foregoing in this part (c).


 


1.7                                 [INTENTIONALLY LEFT
BLANK]


 


1.8                                “Exploit” shall mean make, use, sell, offer
to sell, import, export, practice any method and the exercise of all other
activities with regards to which relief for infringement of patent rights may
be obtained under Title 35 of the United States Code and foreign equivalents
thereto (as the foregoing may be amended or superseded from time to time),
except that Exploit shall not include any “have made” activities (except by
Licensor or Licensee’s Affiliates). “Exploited,” “Exploitation” and other variants or variations of the word “Exploit” shall have correlative meanings.


 


1.9                                “Licensed Field” shall mean Licensed
Products and processes for the use thereof, that are neither sold nor used in
the Applied Markets that:


 


(A)                              (i) when sold or
used in the United States, are designed, developed and manufactured in
accordance with the Quality Systems Regulations (as promulgated by the United
States Food and Drug Administration, and set forth in the Code of Federal
Regulations (“CFR”) at 21 CFR Part 820, and as may be amended from time to
time) or (ii) when sold or used in Europe, are designed, developed and
manufactured in accordance with the ISO 13485 standard (as promulgated by the
International Organization for Standardization, and as may be amended from time
to time) or are certified to be compliant with European Directives on in vitro
diagnostic medical devices (IVD-D), or (iii) when sold or used in other
jurisdictions, satisfy the applicable regulatory requirements relating to in
vitro human diagnostic products;


 


(B)                                are
designed, configured, promoted and intended for use with a menu of
Licensee-provided diagnostic kits that are approved, compliant or are otherwise
cleared by the appropriate regulatory authority in each jurisdiction where the
instrument is used or sold; and


 


(C)                                in
the U.S., may also be used for Licensee-provided Analyte Specific Reagents, as
such term is defined pursuant to 21 CFR 809 and 21 CFR 864.4020.


 


1.10                          “Licensed Patents” shall mean: (a) the Algorithm and
Heated Cover Patent Rights, the Amplification System Patent Rights, the
Automated Method Patent Rights, the Real-Time Apparatus Patent Rights and the
Thermal Cycling Instrument Patent Rights; (b) any


 


[***] indicates material that has been omitted pursuant to a request
for confidential treatment. The omitted material has been filed separately with
the Securities and Exchange Commission.


 


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continuations, continuations-in-part (but only to the extent of any
claims entitled to claim priority from any of the applications that resulted in
the patents in the foregoing in part (a) above), divisionals, reissues,
re-examinations, extensions, provisionals, substitutes or renewals of any of
the foregoing in part (a) above, but only to the extent any of the
foregoing claims any instrument, process or system, and all patents issuing
from any of the foregoing in this part (b); and (c) [***]. No other
patents or patent applications are included within the definition of Licensed
Patents. Notwithstanding anything herein to the contrary, a non-exhaustive list
of patents that are excluded from the Licensed Patents are the patents set
forth on Exhibit I attached hereto and also excluded from the Licensed
Patents are, with the exception of the Real-Time Apparatus Patent Rights, U.S.
Patent Nos. 5,475,610, 6,703,236, 5,656,493, 5,038,852, and 5,33,675, any
patents and patent applications claiming priority from the patents on Exhibit I
or having common priority claims as the patents on Exhibit I. “Licensed
Patents” do not include rights under any other patent or patent application,
and expressly exclude, by way of example only, patents and patent applications
that cover real-time methods or cover reagents, kits, mixtures or systems that
are capable of use with Licensed Real-Time Thermal Cyclers.


 


1.11                          “Licensed Product” shall mean a Licensed Real-Time Thermal
Cycler, including any components, replacement parts, upgrades, computer
software or hardware for or in the foregoing, the Exploitation of which would,
but for the rights granted under this Agreement, infringe at least one Valid
Claim of the Real-Time Apparatus Patent Rights.


 


1.12                           [INTENTIONALLY LEFT BLANK].


 


1.13                          “Licensed Real-Time Thermal Cycler” shall
mean a Real-Time Thermal Cycler the Exploitation of which would, but for the
license granted herein, infringe at least one Valid Claim of the Real-Time
Apparatus Patent Rights. A Licensed Real-Time Thermal Cycler is a complete
instrument, including, for instance, a computer and basic software used for
controlling the instrument and collecting data.


 


1.14                          “Net Sales Price” shall mean (a) in the case of an arm’s-length
transaction to an unrelated Third Party end user not enjoying any special
course of dealing with Licensee or its Affiliates, wherein the end user Third
Party is not providing any nonmonetary consideration and the gross invoice
price for a Licensed Product that is subject to royalty obligation under Article 3
herein is not affected by any other purchase of goods or services or any
license of intellectual property (other than the end user rights conveyed
pursuant to Article 2 of this Agreement): the gross invoice price for such
sale of such Licensed Product (together with any associated warranty coverage
sold) to an end user Third Party by Licensee or its Affiliates of such Licensed
Product, minus the following deductions where applicable: (i) discounts
allowed and taken, in amounts customary in the trade, and (ii) sales
and/or use taxes and/or duties for particular sales. No allowance or deduction
shall be made for commissions or collections, by whatever name known;


 


[***] indicates material that has been omitted pursuant to a request
for confidential treatment. The omitted material has been filed separately with
the Securities and Exchange Commission.


 


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(b) subject to Section 3.3, in the case of a transaction to a
distributor that is not an Affiliate of Licensee, [***]. No allowance or
deduction shall be made for commissions or collections, by whatever name known;
and


 


(c) in the case of a sale, loan, lease, consignment, distribution
or transfer of Licensed Products subject to royalty obligations under Article 3
herein that is not within the scope of Section 1.14(a) or 1.14(b):
the Average Net Sales Price (as such term is defined below) for sales to end
users for such Licensed Product calculated under Section 1.14(a). Without
limiting the foregoing, Net Sales Price shall be calculated as set forth in
this Section 1.14(c) in the event of any sale, loan, lease,
consignment, gift, distribution or other transfer (i) to a party that is
Licensee itself or an Affiliate of Licensee or (ii) to a Third Party that
enjoys a special course of dealing with one or more of the Licensee or an
Affiliate of Licensee. In the case of a Reagent Rental of Licensed Products,
however, [***].


 


For the purposes of this definition, an arm’s-length sale to an
unrelated Third Party is one in which (i) such Third Party does not enjoy
any special course of dealing with Licensee or its Affiliates, (ii) such
Third Party does not provide any nonmonetary consideration for a Licensed
Product (under Article 3 herein), and (iii) the gross invoice price
in such sale of such Licensed Product is not affected by any other purchase of
goods or services or any license of intellectual property other than the end
user rights conveyed in Article 2 herein.


 


As used herein the term “Average Net Sales Price” shall mean (A) the
average of Net Sales Price for transfers under Section 1.14(a) over
the one year period preceding the date of transfer that is within this Section 1.14(c) of
the same type and model of Licensed Product and in the same country as such
transferee; (B) if such one-year average Net Sales Price data is
unavailable, then the seller’s (Licensee or its Affiliate) published end user
list price of such Licensed Product for end users in such country as the
transferee; or (C) if data is unavailable under part (A) or (B), then
the fair market value (with reference to the sales price of comparable
products).


 


1.15                          “Notice” shall mean the label statements affixed to Licensed
Products under Section 4.


 


1.16                          “Person” shall mean a(n) individual, corporation, trust,
partnership, limited liability company, joint venture, unincorporated
organization or other entity.


 


1.17                           [INTENTIONALLY LEFT BLANK]


 


1.18                          “Reagent Rental” shall mean an arrangement whereby a Licensed
Product is provided to a customer, where part of the consideration for the
customer obtaining such Licensed Product includes an ongoing reagent or
consumable purchase commitment on the part of a customer such that part of the
price for the reagents or consumables is attributable to the acquisition cost
or leasing cost of the Licensed Product, the cost of servicing the Licensed
Product and/or other items of cost recovery in connection with supply and
support of the Licensed Product; provided, however, that either (a) title
to such Licensed Product does not transfer to such customer (if at all) before
such customer has completely fulfilled its


 


[***] indicates material that has been omitted pursuant to a request
for confidential treatment. The omitted material has been filed separately with
the Securities and Exchange Commission.


 


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purchase commitment for such reagents or consumables, or (b) such
customer’s continued right to use and possess such Licensed Product is
contingent upon such customer completely fulfilling its purchase commitment for
such reagents or consumables.


 


1.19                          “Real-Time
Apparatus Patent Rights” shall mean (a) Valid Claims of
Licensor’s U.S. Patent No. 6,814,934 and any reexamination or extension
thereof and (b) any Valid Claims in foreign equivalent patents and patent
applications thereof where such corresponding Valid Claims claim priority from
any of the applications for patent that resulted in U.S. Patent No. 6,814,934
or any reexamination or extension thereof that claims an instrument, process or
system (such as, by way of example only, EP 872562 and JP 3136129). “Real-Time
Apparatus Patent Rights” do not include rights under any other patent or patent
application, and expressly exclude, by way of example only, patents and patent
applications (a) that cover real-time methods or cover reagents, kits,
mixtures or systems that are capable of use with Licensed Real-Time Thermal
Cyclers or (b) that are set forth on Exhibit I.


 


1.20                          [INTENTIONALLY LEFT BLANK]


 


1.21                          “Real-Time
Thermal Cycler” shall mean an instrument, whether in single or
multiple modules, that includes a Thermal Cycler and a detector which can be
used to detect a fluorescence optical signal while the Thermal Cycler is in
operation and without opening the reaction chambers (for example, tubes,
microtitre plates, wells or depressions) in which amplification is occurring.


 


1.22                           [INTENTIONALLY LEFT BLANK]


 


1.23                          “Thermal
Cycling Instrument Patent Rights” shall mean (a) Valid Claims
of U.S. Patent Nos. 5,038,852 and 5,333,675, and (b) any Valid Claims in
foreign equivalent patents and patent applications thereof where such
corresponding Valid Claims claim priority from any of the applications for
patent that resulted in U.S. Patent No. 5,038,852 or U.S. Patent No. 5,333,675.


 


1.24                          “Territory”
shall mean the world.


 


1.25                          “Thermal
Cycler” shall mean an instrument, whether in single or multiple
modules, that is capable in itself of automatically cycling samples in the PCR
process, including any controlling hardware and software.


 


1.26                          “Third
Party” shall mean a party other than one of the Parties to this
Agreement.


 


1.27                          “Valid
Claim” shall mean a claim of an unexpired patent or pending patent
application that has not been held unpatentable, invalid or unenforceable
pursuant to a final and unappealable decision of a court or other applicable
administrative agency with appropriate jurisdiction.


 


2                                         License
Grant


 


2.1                                 Rights for Licensed
Products. Upon the terms and subject to the exceptions and conditions of
this Agreement, including without limitation Section 2.3, Licensor hereby
grants to Licensee under the Licensed Patents a personal, non-transferable (except as set forth
in Article 9), royalty-bearing, non-exclusive license in the Licensed
Field and in the Territory, with no rights to sublicense, to sell directly or
indirectly through distributors


 


[***] indicates material that has been omitted pursuant to a request
for confidential treatment. The omitted material has been filed separately with
the Securities and Exchange Commission.


 


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(including
Licensee’s Affiliates) (subject to Section 2.3) and to otherwise Exploit, in
all cases under Licensee’s trademarks and trade names, Licensed Products in the
form of complete Licensed Real-Time Thermal Cyclers as well as any add-on,
substitute, repair and replacement components (including, without limitation,
software or hardware ), and not as a foundry or OEM manufacturer for Third
Parties. For the avoidance of doubt, nothing in this Section 2.1 precludes
Licensee or any of its Affiliates from integrating any Licensed Product into or
with any other instruments or components, provided that none of such
integration, other instrument(s) or component(s), resulting integrated system
or the use of such integrated system infringes any of Licensor’s patent rights
other than the Licensed Patents (but only to the extent of any claims of such
Licensed Patents that are infringed by such Licensed Product prior to any such
integration), and further provided that the foregoing does not convey or
constitute a license, immunity from suit or any other right under any claims of
the Licensed Patents other than with respect to the Exploitation of such
Licensed Product itself (and not such other instruments and components). For
the further avoidance of doubt, the foregoing right to sell directly or
indirectly through Licensee’s Affiliates includes the right of such Affiliates
to import or export Licensed Products from Licensee or any of its Affiliates.


 


2.2                                No Right to
Sublicense. Subject to Section 9.1, rights granted to Licensee by this
Agreement are personal to Licensee alone. Licensee shall have no right to
sublicense, assign or otherwise transfer or, subject to Section 2.3, share
its rights hereunder.


 


2.3                                Distributors;
Major Diagnostic Entities. Licensee’s and its Affiliates rights under Section 2.1
to sell through distributors is limited to selling through distributors that
are not Major Diagnostic Entities (as defined below). Licensee and its
Affiliates shall not collaborate with any Major Diagnostic Entity with respect
to the co-development of Licensed Products or systems that include Licensed
Products. As used herein, the term “Major Diagnostic Entity” and “Major
Diagnostic Entities” means any Third Party that had worldwide sales in the
field of molecular diagnostics of [***].


 


2.4                                No
Other Patent Rights or Other Rights Granted. Except as expressly set forth
in Article 5 herein, the license granted hereunder includes no right,
immunity, authorization or license, either expressly, by implication, by
estoppel or otherwise, under any patent or patent application that is not
included in the Licensed Patents. No right is granted to Licensee or its
Affiliates or its or their customers outside the Licensed Field.


 


3                                         Fees,
Royalties, Records and Reports


 


For licenses
and rights granted under Article 2, Licensee shall pay to Licensor:


 


3.1                                License Initiation Fee. In consideration of the license herein
and under that certain Diagnostic Field DNA Sequencing Sublicense Agreement
between the Parties executed on even date herewith (“Diagnostic Field DNA
Sequencing Sublicense Agreement”), Licensee shall pay Licensor a fee of twenty
million dollars ($20,000,000) paid at the rate of two million dollars
($2,000,000) per calendar quarter for ten (10) quarters. The payments shall be
due on the [***]. For the avoidance of doubt only a single fee of 


 


[***] indicates material
that has been omitted pursuant to a request for confidential treatment. The
omitted material has been filed separately with the Securities and Exchange
Commission.


 


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twenty million dollars
($20,000,000) is due for both this Agreement and the Diagnostic Field DNA
Sequencing Sublicense Agreement.


 


3.2                                Licensed Products. Except as provided in Section 3.3,
for each Licensed Product sold, placed or otherwise transferred by Licensee or
its Affiliates (whether to an end user or distributor) on or after the
Effective Date hereto, Licensee shall pay to Licensor a royalty of [***] of the
Net Sales Price of such Licensed Product; and [***]. Notwithstanding anything
above in this Section 3.2 or elsewhere in this Agreement, the following
are [***].


 


3.3                                Reagent
Rental. For each Licensed Product sold, placed, leased or transferred by
Licensee or an Affiliate of Licensee [***] under a Reagent Rental, Licensee
shall pay to Licensor a royalty of [***]. Notwithstanding the foregoing or
otherwise, the [***] shall also apply in such instances where a Licensed
Product is sold, placed, leased or transferred to an end user as part of a
Reagent Rental by a distributor of Licensee or of an Affiliate of Licensee
provided that the Licensee or its Affiliate knows or becomes aware of such
Reagent Rental by such distributor.


 


3.4                                Currency.
All amounts payable hereunder shall be payable in United States dollars. Sales
in other countries shall be converted to U.S. dollars based on the New York
rate of exchange as quoted in the Wall Street Journal for the last business day
of the applicable quarter. If not so published, the Parties may agree on a
substitute publication. In the event there is no comparable publication, the
applicable rate for such date by the appropriate governmental agency in such
country shall apply. The Parties agree that, subject to Licensor’s prior
written consent (which consent shall not be unreasonably withheld), Licensee
may change the foregoing method of calculating currency conversion, provided
such new method is in accordance with Generally Accepted Accounting Principles
in the U.S.


 


3.5                                Maintenance
of Records; Audit. Licensee shall keep, and shall require its pertinent
Affiliates to keep, full, true and accurate records containing all particulars
necessary to calculate the amount payable to Licensor under this Agreement and
to demonstrate Licensee’s (and its Affiliates’) compliance with its obligations
under this Agreement. Such records and the supporting data shall be open at all
reasonable times, for [***] following the end of the calendar year to which
they pertain (and access shall not be denied thereafter, if reasonably
available), to the inspection of an independent certified public accounting
firm retained by Licensor. Such accounting firm will hold such records and
supporting data in strict confidence, except as necessary to consult with and
report to Licensor and Licensee on the accuracy and completeness of Licensee’s
and its Affiliates’ compliance with this Agreement. If in dispute, such records
shall be kept until the later of the expiration of the foregoing [***] period
or the date the dispute is settled. Inspection shall be at Licensor’s expense,
unless the inspector concludes that the amount payable that is stated in a
report is understated by [***] or more, in which case reasonable expenses shall
be paid by Licensee.


 


[***] indicates material that has been omitted pursuant to a request
for confidential treatment. The omitted material has been filed separately with
the Securities and Exchange Commission.


 


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3.6                                Royalty Payments and Royalty
Reports. Licensee shall within [* * *] days after the first of January, April,
July and October deliver (by U.S. mail or nationally recognized
courier service with a text copy in MS-Excel format (or other reasonable format
requested in writing by Licensor) of such report transmitted by email to
royalties@appliedbiosystems.com) to Licensor a true and accurate royalty
accounting report. This report shall be on a country-by-country basis and shall
give such particulars of the business conducted by Licensee in each country
during the preceding three (3) calendar months as are pertinent to
accounting under this Agreement, and shall be in accordance with, and include
at least information specified in, the royalty report form attached hereto as Exhibit II,
as may be amended as mutually agreed upon by the Parties in writing from time
to time.


 


The
correctness and completeness of each report shall be attested to in writing by
a responsible financial officer of Licensee.


 


3.7                                Tax Withholding. Withholding
tax, if any, levied by a government of any country on the  payment made by Licensee to Licensor
hereunder shall be borne by Licensor. Licensee shall use reasonable commercial
efforts to enable Licensor, at Licensor’s expense, to claim exceptions
therefrom under any double taxation or similar agreement in force and shall
produce to Licensor proper evidence of payment of all withholding tax.


 


3.8                                Royalty Report and Payment
Address. Simultaneously with the delivery of each royalty account report (as
per the schedule set forth in Section 3.6), Licensee shall pay to Licensor
the monies then due under this Agreement for the period covered by the report.
Each report and payment shall be sent by the due date to the following address:


 


Applied
Biosystems


850
Lincoln Centre Drive


Foster City,
CA  94404


Attention:
Director of Licensing


 


or to any
address that Licensor may advise in writing thirty (30) days prior to its
becoming effective.


 


3.9                                Interest. If Licensee
fails to pay any amount owing under this Agreement by the due date, the amount
owed shall bear interest at [* * *] from the due date until paid, provided,
however, that if this interest rate is held to be unenforceable for any reason,
the interest rate shall be the maximum rate allowed by law at the time the
payment is due.


 


4                                        License
Notice


 


Patent Notice. Licensee agrees to mark or
cause its applicable Affiliate to mark each Licensed Product and include
prominently in the corresponding user’s manual, but not any other Thermal
Cycler or manual therefor, a Notice to purchaser as specified from time to time
by Licensor. Unless and until Licensor instructs differently (upon which
instruction Licensee will implement the new Notice within a commercially reasonable
timeframe not to exceed one hundred eighty (180) days after Licensee’s receipt
of such instruction), the Notice shall be:


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


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NOTICE
TO PURCHASER


 


This
Real-Time Thermal Cycler is licensed for use solely in the field of human vitro
diagnostics under one or more of U.S. Patents Nos. 6,814,934, 5,038,852,
5,656,493, 5,333,675, 5,475,610, 5,602,756, and 6,703,236, or corresponding
claims in their non-U.S. counterparts, owned by Applera Corporation. No other
field of use (e.g., the research field) is permitted. No right is conveyed
expressly, by implication or by estoppel under any other patent claim, such as
claims to apparatus, reagents, kits, or methods such as 5’ nuclease methods. For
further information on purchasing licenses, contact the Director of Licensing
at Applied Biosystems, 850 Lincoln Centre Drive, Foster City, California 94404,
USA.


 


5             Covenant Not to
Sue


 


5.1                                Covenant.
Upon the terms and subject to the exceptions and conditions of this Agreement,
Licensor grants to Licensee a personal, non-transferable (except as set forth
in Article 9), royalty-free, fully paid-up, non-exclusive covenant not to
sue: (a) Licensee or any of its Affiliates or distributors (excluding all
distributors that are Major Diagnostic Entities) for infringement of any of the
Covenanted Patents in the Licensed Field and in the Territory based on Licensee’s
exercise of the license set forth in Article 2 herein (including, Licensee’s
and its Affiliates’ making, using or selling of Licensed Products in the
Licensed Field pursuant to Article 2) and solely to the extent of Licensee’s,
its Affiliates’ or distributors’ activities that do not exceed the scope of the
license set forth in Article 2 herein; and (b) any end user of any
such Licensed Products described in part (a) above that has purchased or
otherwise obtained the same from Licensee 
(or a distributor or Affiliate of Licensee described in part (a) above)
for infringement of any of the Covenanted Patents in the Licensed Field and in
the Territory based on such end user’s use (solely to the extent within the
scope of the license granted hereunder and in accordance with the terms and
conditions of this Agreement) of such Licensed Products. The foregoing covenant
not to sue granted by Licensor to Licensee in this Section 5.1 shall,
subject to termination of this Agreement pursuant to Article 6 below, be
in effect until the longer of (i) the expiration of the last-to-expire
patent included in the Covenanted Patents, or (ii) the applicable statute
of limitations for enforcement of such Covenanted Patents. Without limiting the
foregoing covenant not to sue distributors or end users, the foregoing covenant
not to sue does not extend to any infringing activities of any Third Party that
occurred prior to the date such Third Party becomes a Licensee Affiliate.


 


5.2                                No
Other Rights Granted. Except as expressly set forth in Article 2
herein, this Agreement does not grant any right, immunity, authorization or
license, either expressly, by implication, by estoppel or otherwise, under any
patent or patent application that is not included in the Covenanted Patents. No
right is granted to Licensee or its Affiliates or its or their customers
outside the Licensed Field.


 


6                                        Term
and Termination


 


6.1                                Term.
This Agreement (and the licenses and royalty obligations hereunder), unless 


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


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sooner
terminated pursuant to this Article 6, shall continue until the date of
expiration of the last-to-expire of the Licensed Patents and the Covenanted
Patents.


 


6.2                                Termination by Licensee. Licensee may
terminate this Agreement for any reason by giving written notice to Licensor
and ceasing to label, advertise or promote any Licensed Products as being
licensed hereunder. Such termination shall be effective [***] after said notice
or cessation of Licensee’s activities licensed hereunder, whichever is later.
During such [***] interval Licensee shall either sell or destroy its remaining
inventory of Licensed Products. Within [***] after the effective date of such
termination, Licensee shall provide Licensor with a royalty report and payment
as per Article 3 along with a certification signed by a company officer
that Licensee no longer has any inventory of Licensed Products.


 


6.3                                Insolvency. This
Agreement shall terminate immediately without Licensee having a right to cure
upon: (a) an adjudication of Licensee as bankrupt or insolvent, or
Licensee’s admission in writing of its inability to pay its obligations as they
mature; (b) an assignment by Licensee for the benefit of creditors; (c) the
appointment of, or Licensee’s applying for or consenting to the appointment of,
a receiver, trustee or similar officer for a substantial part of its property; (d) the
institution of or any act of Licensee instituting any bankruptcy, insolvency
arrangement, or similar proceeding; or (e) the issuance or levy of any
judgment, writ, warrant or attachment or execution or similar process against a
substantial part of the property of Licensee, including, but not limited to,
the rights and licenses granted under this Agreement.


 


6.4                                [INTENTIONALLY LEFT BLANK]


 


6.5                                Termination for Licensee’s
Material Breach. In the event Licensee materially breaches this
Agreement, then without limiting Licensor’s legal or equitable remedies, this
Agreement shall terminate automatically [***] (in the event of a breach of any
payment obligations under this Agreement) or [***] (in the event of any other
material breach of this Agreement) after Licensor provides notice thereof to
Licensee, provided that Licensee fails to cure such material breach within such
[***] or [***] period, respectively. Any failure by Licensee to perform any
payment obligation, or provide a timely and compliant royalty report, as and
when due under this Agreement shall be deemed a material breach of this
Agreement, subject to cure as stated herein, except that the third or any
subsequent occurrence of a failure under this sentence shall not be subject to
cure, if Licensor has given written notice of such failure each time and the
third such notice so specifies. Without limiting the foregoing, in the event a
distributor of Licensee or any of its Affiliates sells Licensed Products
outside of the scope of the license granted under Article 2, Licensee
shall have [***] from Licensee’s receipt of notice from Licensor (which notice
shall identify such distributor and a detailed description of the infringing
activity) to cause such distributor to cease further infringing sales of
Licensed Products.


 


6.6                                Effect of Termination or
Expiration. Upon expiration or termination of this Agreement,
all licenses and covenants not to sue granted to Licensee and its Affiliates
and their respective distributors herein shall terminate.


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


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6.7                                Licensee’s Obligations
Surviving Termination. The termination or expiration of this
Agreement for any reason shall be without prejudice to any rights that shall
have accrued to the benefit of a Party prior to or on account of such
termination or expiration. All remedies provided hereunder or elsewhere (including
under applicable law) are cumulative. Licensee’s obligations to report and pay
royalties as to activities under this Agreement, and Licensor’s right to audit under Section 3.5, shall
survive termination or expiration. Without limiting the survival of other
Sections herein that expressly survive termination or expiration, Articles 1,
8, 10 and 11 and Sections 3.7, 6.6, this 6.7 and 7.3 shall survive any
termination or expiration of this Agreement.


 


6.8                                Termination by
Licensor. Without limiting Licensor’s remedies under the
Settlement Agreement and notwithstanding the provisions of Section 6.5,
Licensor shall have the right to terminate this Agreement, effective
immediately upon written notice to Licensee without any right for Licensee to
cure, where such termination is legally permissible and enforceable under
patent and competition laws (including under patent misuse and antitrust laws
in the United States), if Licensee or any of its Affiliates directly or
indirectly (e.g., with or through support of or supporting a Third Party)
challenges the validity or enforceability of any of the Licensed Patents in any
country in which the Licensed Patents are licensed to Licensee. For the
avoidance of doubt, the act of responding to a Third Party subpoena for documents
or for the taking of a deposition of Licensee or any of its Affiliates or their
respective employees shall not, in and of itself, be considered as an indirect
challenge to validity or enforceability of the Licensed Patents.


 


7                                        Advertisements; Publicity; Confidentiality


 


7.1                                Advertisements. Unless and
until Licensor instructs differently (upon which instruction Licensee will
implement the new statement in a commercially reasonable time not to exceed [***]
after Licensee’s receipt of such instructions)  in advertisements,
catalogs, brochures, sales literature and promotional literature for Licensed
Products, Affiliates and distributors shall state the following prominently in
type and location:


 


This is a Licensed Real-Time Thermal Cycler(s)   under one or more of US Patents Nos.
6,814,934, 5,038,852, 5,656,493, 5,333,675, 5,475,610, 5,602,756, and
6,703,236, or corresponding claims in non-U.S. counterparts thereof, solely for use
in the field of human in vitro diagnostics. No other use is permitted. No right
is conveyed expressly, by implication or by estoppel under any other patent
claim.


 


7.2                                Publicity.
With respect to Licensee’s distribution of any written information to Third
Parties, including but not limited to advertising, brochures, catalogs,
promotional and sales material, and public relations material, Licensor
shall have the right to prescribe changes regarding references to, or
descriptions of:  Licensor, Applied
Biosystems group, Celera Genomics group, the patents under which rights are
granted in this Agreement, or this Agreement. Licensee agrees to comply with
Licensor’s reasonable prescriptions in a commercially reasonable time not to
exceed [***] after Licensee’s receipt of such prescriptions.


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


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7.3                                Confidentiality. Except as
provided in Sections 7.1 and 7.2, Licensee shall maintain the confidentiality
of the provisions of this Agreement and shall refrain from disclosing the terms
of this Agreement without the prior written consent of Licensor during the term
of this Agreement and for a period of [***] after the end of the last-to-expire
of the Licensed Patents and Covenanted Patents under this Agreement, except to
the extent such disclosure is required under applicable law or regulation
provided that (a) such disclosure is limited to the information that must
be so disclosed under applicable law or regulation; and (b) Licensee
notifies Licensor of such requirement and the text of the proposed disclosure
at least [***] before such proposed disclosure is required (or, if such
proposed disclosure is required in less than [***], as far in advance of the
date of disclosure as is reasonably possible) and allows Licensor a reasonable
opportunity to comment upon, object or seek a protective order or other
injunctive relief to prevent or limit such disclosure. Licensor shall
be permitted to name Licensee in any published list of licensees under the
Licensed Patents, for example, in a list published on Licensor’s website. The
foregoing notwithstanding, either Party may issue a press release announcing
execution of this Agreement, provided that said press release is reasonably
acceptable to the other Party and is included in this Agreement as an Exhibit.


 


8                                        Compliance
and Quality


 


8.1                                Compliance
with Applicable Law. In the exercise of any and all rights granted to
Licensee and its Affiliates hereunder and in performance hereunder by Licensee
and its Affiliates and distributors, as between Licensor and Licensee, it shall
be the duty of Licensee, not Licensor, to comply fully with all applicable
laws, regulations and ordinances and to obtain and keep in effect licenses,
permits and other governmental approvals (federal, state or local) necessary or
appropriate for Licensee and its Affiliates and distributors to carry on
activities hereunder.


 


8.2                                No
Endorsement. Licensor does not approve or endorse any Licensed Product of
Licensee in any way or for any purpose, including for real-time PCR. Quality
and quality control with respect to Licensed Products (including suitability
for real-time PCR), according to standards and requirements that may exist in
the marketplace from time to time, are the sole responsibility of Licensee.


 


9                                        Assignment


 


9.1                                Assignment by Licensee. This Agreement
cannot be assumed or assumed and assigned by a trustee or debtor-in-possession
in bankruptcy as set forth in Section 365(c)(1) of the United States
Bankruptcy Code or any similar provisions of state or federal law. In addition,
this Agreement shall not be assigned or transferred by Licensee without the
Licensor’s express written consent (which consent shall be in Licensor’s sole
discretion), except that Licensee may assign or transfer this Agreement without
Licensor’s consent in connection with the sale or transfer of all or
substantially all of Licensee’s business to which this Agreement relates, stock
or assets (whether by merger, acquisition or otherwise). Any assignment or
transfer or attempted assignment or transfer of this Agreement (except as
permitted under this Section 9.1) shall be void ab initio
and result in the immediate and automatic termination of this Agreement without
any requirement of notice or other action by Licensor. In the event of an
internal reorganization or spin- 


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


13

















 


 


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off
of all or substantially all of Licensee’s research products-related business,
Licensee’s human diagnostics-related business and/or Licensee’s nucleic acid
analysis-related business resulting in any or all of such businesses being
conducted through a separate company or separate companies (“Spin-Off”), then
Licensee shall elect which of such companies shall continue to have all rights,
benefits and obligations of Licensee under this Agreement (including all
licenses and covenants not to sue granted by Licensor), up to a maximum of two (2) licensees.
Subject to the foregoing in this Section 9.1, any such resulting licensee
shall not have the right to further transfer any of its rights, benefits or
obligations under this Agreement.


 


9.2                                Assignment by Licensor. Licensor may
assign or transfer all of its rights and obligations under this Agreement at
any time without the consent of Licensee. Licensee agrees to execute such
further acknowledgements or other instruments as Licensor may reasonably
request in connection with such assignment.


 


10                                 Negation
of Warranties, Representations and Indemnification


 


10.1                        No
Warranty; No Implied Rights. Nothing in this Agreement shall be construed
as:  (a) a warranty or
representation by Licensor as to the validity, enforceability or scope of any
patent; (b) a warranty or representation that the exercise of the license
hereunder or the Exploitation of any Licensed Product pursuant to this
Agreement is or will be free from infringement of patents or other intangible
rights of Third Parties; or a warranty or representation that the practice (or
Exploitation of Licensed Products) under the Licensed Patents or Covenanted
Patents is or will be free from infringement of patents of Third Parties; (c) an
obligation by Licensor to file any patent application, secure any patent, or
maintain any patent in force; (d) any obligation of Licensor to prosecute,
enforce or sublicense its patent rights to (or against) Third Party infringers;
(e) except as expressly set forth herein, conferring upon Licensee the
right to use in advertising, publicity or otherwise, in any form, the name of,
or any trademark or trade name of, Licensor or any of its Affiliates; (f) granting
by implication, estoppel, or otherwise, any license, immunity or rights under
patents, trade secrets, know-how, copyrights, or other intangible rights of
Licensor other than the express licenses granted under the Licensed Patents
pursuant to Article 2 and the express covenant not to sue granted with
respect to the Covenanted Patents pursuant to Article 5, regardless of
whether any such patent or intangible right is dominant or subordinate to the
patents under which rights are granted in this Agreement; (g) an
obligation to furnish any know-how; or (h) creating any agency,
partnership, joint venture or similar relationship between Licensor and
Licensee.


 


10.2                        EXCEPT
AS EXPRESSLY STATED HEREIN, LICENSOR DOES NOT MAKE BUT EXPRESSLY DISCLAIMS
EXPRESS OR IMPLIED WARRANTIES OF ANY KIND (INCLUDING, WITHOUT LIMITATION, ANY
WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR NONINFRINGEMENT)
WITH RESPECT TO THE LICENSED PATENTS, THE COVENANTED PATENTS, THE PRACTICE OF
THE LICENSE HEREUNDER OR THE MAKING OR EXPLOITATIONS OF PRODUCTS LICENSED
HEREUNDER OR COVERED BY THE COVENANT NOT TO SUE GRANTED HEREUNDER. IN NO EVENT
SHALL LICENSOR BE LIABLE HEREUNDER FOR ANY SPECIAL, 


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


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PUNITIVE,
INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING, WITHOUT LIMITATION, LOST
PROFITS).


 


10.3                          Indemnification.
Licensee shall assume full responsibility for its operation under the Licensed
Patents and Covenanted Patents under which rights are granted in this
Agreement, the manufacture of Licensed Products and the use thereof and shall
defend, indemnify and hold Licensor harmless from and against all liability,
demands, damages, expenses (including reasonable attorneys’ fees) and losses
for infringement of Third Party intellectual property rights, death, personal
injury, illness, property damage or any other injury or damage, including any
damages or expenses arising in connection with state or federal regulatory
action (collectively, “Claims”) arising from Licensee’s and its Affiliates’ and
their respective distributors’ Exploitation of any Licensed Products, except to
the extent any Claims are caused solely by Licensor’s negligence or intentional
misconduct.


 


10.4                          Licensor.
Licensor represents and warrants to Licensee that Licensor: (a) owns
or has a license under the Licensed Patents and the Covenanted Patents; and (b) has
the right to grant the licenses, sublicenses and covenants not to sue, as the
case may be, as provided in this Agreement, under the Licensed Patents and the
Covenanted Patents in the Licensed Field.


 


10.5                          Licensee
Representations and Warranties. Licensee represents and warrants to
Licensor that Licensee has not, to a material extent, Exploited any product
that would be licensed hereunder if any of the foregoing actions in this Section 10.5
had occurred during the term of this Agreement, and that any such actions are
subject to the reporting and payment obligations in Article 3. Without
limiting Licensor’s causes of action or remedies, Licensee covenants for itself
and its Affiliates not to infringe, whether directly, by inducement, by
contribution or otherwise, the  Licensed
Patents by exceeding the scope of the license rights granted to Licensee and
its Affiliates pursuant to Article 2 hereunder.


 


11                                 Miscellaneous


 


11.1                        Integration. This Agreement
together with the Settlement Agreement constitutes the entire agreement between
the Parties as to the subject matter hereof, and all prior negotiations,
representations, agreements and understandings are merged into, extinguished by
and completely expressed by it. This Agreement may be modified or amended only
by a writing executed by authorized officers of each of the Parties.


 


11.2                        Notices. Any notice
required or permitted to be given by this Agreement shall be given by postpaid,
first class, registered or certified mail, or by overnight courier or by
facsimile, properly addressed to the other Party at the respective address as shown
below, and any notice provided under this Agreement shall be from:


 


If to or from
Licensor:


 


Applied
Biosystems


850
Lincoln Centre Drive


Foster
City, CA  94404


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


15

















 


 


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Attention:
Director of Licensing


Fax
No.:  (650) 638-6071


 


with a copy to:


 


Weil, Gotshal & Manges, LLP


201 Redwood Shores Parkway


Redwood Shores, CA  94065


Attn: Vern Winters, Esq.


Fax No.:  (650) 802-3100


 


If
to or from Licensee:


 


Beckman Coulter, Inc.


4300 North Harbor Boulevard

Fullerton, CA  92835

Attention:  Legal Department


Fax
No.:  (714) 773-7936


 


with a copy to:


 


Sheppard, Mullin, Richter & Hampton LLP


12544 High Bluff Drive, Suite 300


San Diego, CA  92130


Attn:  Amar L. Thakur, Esq.


Fax No.:  (858) 509-3691


 


Either Party
may change its address or the operating group providing notices under this
Agreement by providing notice to the other. A notice shall be deemed given four
(4) full business days after the day of mailing, or one full day after the
date of delivery to the courier, or the date of facsimile transmission, as the
case may be.


 


11.3                          Governing
Law. This Agreement shall be deemed made in the State of California, and it
shall be construed and enforced in accordance with the laws of the State of
California without regard to the conflict of laws provisions thereof.


 


11.4                          Binding Arbitration. All disputes
arising out of or otherwise related to this Agreement shall be exclusively
resolved through binding arbitration by three arbitrators selected by the
American Arbitration Association, in accordance with the American Arbitration
Association rules then in effect. Such binding arbitration shall be venued
in Los Angeles, California, if brought by Licensee, and shall be venued in San
Francisco, California, if brought by Licensor. The Parties shall equally share
the cost of such arbitration; provided, however, the arbitrator may award
attorneys fees and costs to the prevailing Party in such arbitration.


 


11.5                          Conflicting Provisions. Nothing in
this Agreement shall be construed to require the commission of any act contrary
to law, and wherever there is any conflict between any provision of this
Agreement or concerning the legal right of the Parties to enter into this 


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


16

















 


 


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contract
and any statute, law or ordinance, the latter shall prevail, but the provision
shall be limited only to the extent necessary.


 


11.6                          Severability.
If any provision hereof should be held invalid, illegal or unenforceable in any
respect, then, to the fullest extent permitted by applicable law: (a) all
other provisions hereof shall remain in full force and effect and shall be
liberally construed in order to carry out the intent of the Parties as nearly
as may be possible; and (b) the Parties agree to negotiate in good faith a
provision, in replacement of the provision held invalid, illegal or
unenforceable, that is consistent with applicable law and accomplishes, as
nearly as possible, the original intention of the Parties with respect thereto.
To the fullest extent permitted by applicable law, each Party hereby waives any
provision of law that would render any provision hereof prohibited or
unenforceable in any respect.


 


11.7                          Construction.
Except where the context otherwise requires, wherever used, the singular shall
include the plural and the word “or” is used in the inclusive sense. The
captions and headings of this Agreement are for convenience of reference only
and in no way define, describe, extend or limit the scope or intent of this
Agreement or the intent of any provision contained in this Agreement. Each
Party hereto and its counsel have participated fully in the review and
negotiation of this Agreement. Both Parties have participated equally in the
formation of this Agreement; the language of this Agreement shall not be
presumptively construed against either Party. As used herein “includes” and
related terms shall be deemed to be followed by the phrase “without limitation”.


 


11.8                          Independent
Contractors. It is expressly agreed that the Parties, shall be independent
contractors and that the relationship between the Parties shall not constitute
a partnership, joint venture or agency.


 


11.9                          Waiver.
The observance of any provision of this Agreement may be waived only by a
writing executed by an authorized officer of each Party. The waiver by either
Party hereto of any right hereunder or the failure to perform or a breach by
the other Party shall not be deemed a waiver of any other right hereunder or of
any other breach or failure by said other Party whether of a similar nature or
otherwise.


 


11.10                    Counterparts.
This Agreement may be executed (including via facsimile) in two (2) or
more counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.


 


11.11                    No Third
Party Beneficiaries. The representations, warranties, covenants, rights and
obligations set forth in this  Agreement
are for the sole benefit of the Parties and their successors and permitted
assigns, and they shall not be construed as conferring any rights on any Third
Parties.


 


11.12                    Bankruptcy
Code 365(n). The Parties acknowledge and agree that this Agreement is a
license of rights to “intellectual property” as defined under Section 101(56)
of the United States Bankruptcy Code. Except as expressly permitted by this
Agreement, this Agreement cannot be assumed and assigned by a trustee or
debtor-in-possession in bankruptcy as set forth in Section 365(c)(1) of
the United States Bankruptcy Code, or any similar provisions of state or
federal law.


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


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11.13       Export Control
Regulations.  The rights and
obligations of the Parties under this Agreement shall be subject in all
respects to United States laws and regulations as shall from time to time
govern the license and delivery of technology and products abroad, including
the United States Foreign Assets Control Regulations, Transaction Control
Regulations and Export Control Regulations, as amended, and any successor
legislation issued by the Department of Commerce, International Trade
Administration, or Office of Export Licensing. 
Without in any way limiting the provisions of this Agreement, each Party
agrees that, unless prior authorization is obtained from the Office of Export
Licensing, it will not export, re-export, or transship, directly or indirectly,
to any country, any of the technical data disclosed to it by the other Party
hereto if such export would violate the laws of the United States or the
regulations of any department or agency of the United States Government.


 


11.14       No Admission of
Liability.  Notwithstanding anything
in this Agreement or otherwise, nothing in this Agreement constitutes an
admission by either Party of any infringement, validity or enforceability of
any of the Licensed Patents or Covenanted Patents.


 


[***]
indicates material that has been omitted pursuant to a request for confidential
treatment. The omitted material has been filed separately with the Securities
and Exchange Commission.


 


[Signature Pages Follow.  The remainder of this page is
intentionally left blank.]


 


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IN WITNESS
WHEREOF, the Parties hereto have caused this Agreement to be duly executed by
their respective authorized representatives, effective as of the Effective
Date.


 


	
  APPLERA
  CORPORATION,

  	
   

  	
  BECKMAN COULTER, INC.

  
	
  THROUGH ITS
  APPLIED

  	
   

  	
   

  
	
  BIOSYSTEMS
  GROUP AND

  	
   

  	
   

  
	
  CELERA
  GENOMICS GROUP

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  By:

  	
  /s/ Catherine M. Burzik

  	
   

  	
  By:

  	
  /s/ Paul Glyer

  
	
   

  	
  Catherine M. Burzik

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Title: President

  	
   

  	
  Title:

  	
  SVP Strategy and Business Development

  
	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
  June 30, 2006

  	
   

  	
  Date:

  	
  6/30/06

  
							



 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


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EXHIBIT
I


Exemplary
Patents Excluded from License Granted to Licensee(1)


 


	
  Amplification Patents

  	
   

  	
  5’ Nuclease and Probe Patents

  
	
  4,683,195*

  	
   

  	
  5,210,015

  
	
  4,683,202*

  	
   

  	
  5,219,727

  
	
  4,965,188*

  	
   

  	
  5,476,774

  
	
   

  	
   

  	
  5,487,972

  
	
  Polymerase Patents

  	
   

  	
  5,538,848

  
	
  5,352,600

  	
   

  	
  5,723,591

  
	
  5,618,711

  	
   

  	
  5,804,375

  
	
  5,789,224

  	
   

  	
  5,876,930

  
	
  6,127,155

  	
   

  	
  6,030,787

  
	
   

  	
   

  	
  6,214,979

  
	
  RT and RT-PCR Patents

  	
   

  	
  6,258,569

  
	
  5,310,652

  	
   

  	
   

  
	
  5,322,770

  	
   

  	
  Chemically-Modified Hot-Start Polymerase Patents

  
	
  5,407,800

  	
   

  	
  5,677,152
  (claims 24-30)

  
	
   

  	
   

  	
  5,773,258
  (claims 11-13)

  
	
  Sequencing Patents

  	
   

  	
   

  
	
  5,075,216

  	
   

  	
  dsDNA-Binding Dye Assay Patents

  
	
   

  	
   

  	
  5,994,056

  
	
  Taq Patent

  	
   

  	
  6,171,785

  
	
  4,889,818
  (non-US rights only)

  	
   

  	
   

  
	
  5,079,352

  	
   

  	
  Kit Patents

  
	
   

  	
   

  	
  6,040,166*

  
	
  Thermal Cycler Improvements

  	
   

  	
  6,197,563*

  
	
  6,555,792

  	
   

  	
  6,514,736*

  
	
  6,153,426

  	
   

  	
   

  
	
  5,942,432

  	
   

  	
  Optics

  
	
  6,719,949

  	
   

  	
   

  
	
  6,703,236

  	
   

  	
  6,563,581

  
	
  5,224,778

  	
   

  	
  6,211,989

  
	
  5,282,543

  	
   

  	
  6,744,502

  
	
  6,677,151

  	
   

  	
  6,839,179

  
	
  6,833,536

  	
   

  	
  6,982,166

  
	
  EP 1216098

  	
   

  	
   

  
	
  6,033,880

  	
   

  	
  Plastics for PCR

  
	
  5,456,360

  	
   

  	
  6,825,047

  
	
  6,638,761

  	
   

  	
  6,514,750

  
	
   

  	
   

  	
  6,942,836

  
	
   

  	
   

  	
  6,090,251

  
	
  Algorithms

  	
   

  	
   

  
	
  5,766,889

  	
   

  	
   

  



 






(1)The
tabulated patents are intended to be representative members of global patent
families having common priority claims that are to be excluded from the license
to Licensee hereunder.


 


*Expired.


 


[***] indicates material that has been omitted pursuant to a request
for confidential treatment. The omitted material has been filed separately with
the Securities and Exchange Commission.


 


20

















 


 


HIGHLY
CONFIDENTIAL


EXECUTION VERSION


 


EXHIBIT
II


 


Summary Royalty/Fee Report


REAL-TIME
INSTRUMENT PATENT LICENSE AGREEMENT


 


for the
Period:
                    
to                    
for Sales in the country of


 


Licensee:
                                  Effective
Date:                     
Royalty/Fee Rate:


 


o   Check
here if there were no sales for this period.


 


	
  R-T TC

  Model

  	
   

  	
  No. of

  Units

  Sold

  	
   

  	
  Gross Invoice

  price (actual)

  	
   

  	
  Allowed

  Deductions

  (explain)

  	
   

  	
  Net sales

  Price (actual)

  	
   

  	
  Royalty Due

  (US$)

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  



 


	
  R-T TC

  Model

  	
   

  	
  No. of Units

  Sold

  	
   

  	
  Price to

  Distributor

  	
   

  	
  Calculated Net sales

  Price

  	
   

  	
  Royalty Due

  (US$)

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  



 


I hereby certify the information set forth
above is correct and complete with respect to the amounts due under this
Agreement.


 


	
  By

  	
   

  	
   

  	
  Title

  	
   

  	
   

  	
  Date

  	
   

  



 


Name (please print)


 


Applera Corporation  Send report to: Director of
Licensing, Applied Biosystems, 850 Lincoln Centre Drive, Foster City, CA 94404
USA


 


[***] indicates material that
has been omitted pursuant to a request for confidential treatment. The omitted
material has been filed separately with the Securities and Exchange Commission.


 


21