Exhibit 10.21


 


AMENDMENT NO. 1


 


to


 


ASSIGNMENT AGREEMENT


 


This AMENDMENT TO ASSIGNMENT AGREEMENT (“Amendment”),
effective as of May 12, 2008 (the “Amendment Date”),
is made and entered into by and between PHARMACYCLICS, INC.,
a Delaware corporation having a place of business at 995 East Arques Avenue,
Sunnyvale, California 94085, (“Pharmacyclics”)
and APPLERA CORPORATION, a Delaware
corporation, through its CELERA GROUP
having a place of business at 45 West Gude Drive, Rockville, Maryland 20850 (“Celera”).  Pharmacyclics and Celera may each be referred
to herein individually as a “Party” or,
collectively, as “Parties.”


 


WHEREAS, Pharmacyclics and Celera are parties to the
Assignment Agreement, effective as of April 7, 2006, whereby Celera
assigned to Pharmacyclics certain proprietary technology and know-how related
to the Celera Programs, including but not limited to the HDAC Program (the “Assignment Agreement”);


 


WHEREAS, Pharmacyclics desires that certain payment terms
of the Assignment Agreement relating to [***] be amended; and


 


WHEREAS, Celera desires that such payment terms should be
amended, subject to the terms and conditions set forth below.


 


NOW, THEREFORE, in consideration of the mutual covenants
and obligations set forth herein, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged,
Pharmacyclics and Celera hereby agree as follows:


 


1.                                      In
General.


 


All terms defined in the
Assignment Agreement shall have a meaning in this Amendment as in the Assignment
Agreement, unless otherwise expressly defined in this Amendment.


 


2.                                      Amendment
of the Assignment Agreement.


 


2.1          Amendment of Section 6.3.  Section 6.3 of the Assignment Agreement
is hereby amended to read in its entirety as follows;


 


6.3          Product
Milestones


 


(a)                                  Pharmacyclics will pay to Celera payments
as set forth in this Section 6.3 within thirty (30) days after (i) under
Section 6.3(b) and 6.3(c), Pharmacyclics’ receipt of upfront and
milestone payments from one or more Third Parties upon the grant by
Pharmacyclics of a sublicense to such Third Party under the Celera Technology
and the Celera Patents to make, use, offer to sell, sell and import any
Assigned Product which is an [***], and (ii) under Section 6.3(d),
the first achievement of the 


 


 


[***] 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.


 

















 


                                                corresponding milestone for an Assigned
Product which is an [***] or which is a [***]. 
Such payments shall be made in Dollars by wire transfer of immediately
available funds into an account designated by Celera.  No achievement milestone payment will be
payable more than once, no matter how many times such milestone is achieved by
a single Assigned Product or by multiple Assigned Products in each of the [***]
category or the [***] category.  Such
payments will be nonrefundable and non-creditable against Royalties payable
pursuant to Sections 6.4, and any other fees, milestone payments or other
payments due Celera under this Agreement.


 


(b)                                  Subject to the terms and conditions of this Agreement,
in the event that Pharmacyclics, within two years of the Amendment Date, grants
a sublicense to one or more Third Parties under the Celera Technology and the
Celera Patents to make, use, offer to sell, sell and import any Assigned
Product which is an [***], Pharmacyclics will pay to Celera [***] from such
Third Parties.  For purposes of this Section 6.3(b) and
Section 6.3(c), the term “[***]” does not include [***].


 


(c)                                  Subject to the terms and conditions of
this Agreement, in the event that Pharmacyclics, at any time subsequent to two
years after the Amendment Date, grants a sublicense to one or more Third
Parties under the Celera Technology and the Celera Patents to make, use, offer
to sell, sell and import any Assigned Product which is an [***], Pharmacyclics
will pay to Celera the greater of (i) [***]% of [***] from such Third
Parties, [***] or (ii) [***]% of [***] received from such Third Party. The
foregoing amounts will be determined as and when Pharmacyclics receives such
amounts and will take into account all payments received by Pharmacyclics as
described in this Section 6.3(c). For purposes of this Section 6.3(c),
the term “[***]” means [***].


 


                                                For example: if Pharmacyclics has paid
Celera [***] due to Celera from an initial Third Party sublicense agreement
through 6.3(c)(i), but then enters into a second Third Party sublicense
agreement where Pharmacyclics receives from such Third Party [***],
Pharmacyclics would [***].


 


(d)                                  Subject to the terms and conditions of
this Agreement, Pharmacyclics will pay Celera milestone payments in accordance
with the following table:


 




	
  Milestone Event

  	
   

  	
  Milestone Payment Amount (Dollars)

  	
   

  
	
   

  	
   

  	
  [***]

  	
   

  	
  [***]

  	
   

  
	
  1.  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  
	
  2.  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  
	
  3.  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  
	
  4.  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  
	
  5.  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  
	
  6.  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  
	
  7.  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  	
  $

  	
  [***]

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Total

  	
   

  	
  $

  	
  72
  million

  	
   

  	
  $

  	
  32
  million

  	
   

  






 


 


[***] 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.


 


2

















 


2.2          Amendment of Section 6.4.  Section 6.4 of the Assignment Agreement
is hereby amended to read in its entirety as follows;


 


6.4          Royalties


 


(a)                                  Subject to the terms and conditions of this Agreement,
Pharmacyclics will pay Celera a tiered Royalty in accordance with the following
table on worldwide Net Sales:


 




	
  Total Net Sales of an Assigned 

  Product in a Calendar Year

  	
   

  	
  Percent of Net Sales

  	
   

  
	
   

  	
   

  	
  [***]

  	
   

  	
  [***]

  	
   

  	
  [***]

  	
   

  
	
  [***] to $[***]

  	
   

  	
  [***]

  	
  %

  	
  [***]

  	
  %

  	
  [***]

  	
  %

  
	
  $[***] to $[***]

  	
   

  	
  [***]

  	
  %

  	
  [***]

  	
  %

  	
  [***]

  	
  %

  
	
  Above $[***]

  	
   

  	
  [***]

  	
  %

  	
  [***]

  	
  %

  	
  [***]

  	
  %

  






 


(b)                                  Notwithstanding Section 6.4(a) as
applied to [***], subject to the terms and conditions of this Agreement, in the
event that Pharmacyclics, grants a sublicense to one or more Third Parties
under the Celera Technology and the Celera Patents to make, use, offer to sell,
sell and import any Assigned Product which is an [***], Pharmacyclics will pay
to Celera a Royalty with respect to sales of such sublicensed [***] equal to
the greater of (i) [***] percent ([***]%) of any royalties on sales of
such sublicensed [***] received by Pharmacyclics from such Third Parties or (ii) [***]%
of worldwide Net Sales of such sublicensed [***] sold by such Third Parties. In
each case (i) and (ii) above, no payments will be due or payable by 


 


 


[***] 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.


 


3

















 


                                                Pharmacyclics to Celera under Section 6.4(a) with
respect to sales of such sublicensed [***] by such Third Parties.  For purposes of clarification, Pharmacyclics
will pay to Celera the Royalties set forth in Section 6.4(a) on Net
Sales of such [***] sold by or through Pharmacyclics, other than through the
above-described sublicenses.


 


(c)                                  Pharmacyclics may deduct from Royalties
payable to Celera pursuant to Sections 6.4(a) and/or 6.4(b), as
applicable, up to [***] percent ([***]%) of any amounts paid to Third Parties
to obtain licenses or other rights under any Patents to the extent that,
without such licenses or rights, Pharmacyclics cannot otherwise make, use,
sell, offer for sale, or import the applicable Assigned Product without
infringing a claim of such Patent; provided that, after such deduction, the
amount paid to Celera is not less than [***] percent ([***]%) of the amount
that would otherwise have been paid to Celera pursuant to Sections 6.4(a) or
6.4(b), as applicable.  As a condition to
benefiting from this Section 6.4(c), Pharmacyclics must deliver to Celera
a true copy of each agreement with a Third Party that Pharmacyclics contends is
subject to this Section 6.4(c). 
Each such agreement shall be treated by Celera as Pharmacyclics’
Confidential Information.


 


3.                                      Reference
to and Effect on the Assignment Agreement.


 


3.1          Pursuant to Section 13.1 of the
Assignment Agreement, this Amendment shall be effective upon the Amendment
Date, whereupon the Assignment Agreement shall be, and hereby is, amended as
set forth herein.


 


3.2          On and after the Amendment Date, each
reference in the Assignment Agreement to “this Agreement,” “hereunder,” “hereof,”
“herein” or words of like import shall mean and be a reference to the
Assignment Agreement as amended hereby. 
No reference to this Amendment need be made in any instrument or
document at any time referring to the Assignment Agreement, a reference to the
Assignment Agreement in any of such to be deemed to be a reference to the
Assignment Agreement as amended hereby.


 


3.3          All provisions of the Assignment
Agreement not expressly modified by this Amendment shall remain in full force
and effect.


 


4.                                      Counterparts.


 


This Amendment may be
executed in one or more counterparts, each of which shall be deemed to be an
original, but all of which together shall constitute a single instrument.


 


Signature Page Follows


 


 


 


[***] 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.


 


4

















 


IN WITNESS THEREOF, the Parties have caused
this Amendment to be duly executed by their respective duly authorized officers
as of the Amendment Date.


 




	
  PHARMACYCLICS,
  INC.

  (“Pharmacyclics”)

  	
   

  	
  APPLERA
  CORPORATION through its 

  CELERA GROUP

  (“Celera”)

  






 




	
  By:

  	
   /s/ Richard A. Miller

  	
   

  	
  By:

  	
   /s/ Victor K. Lee

  






 




	
  Print Name:    Richard A. Miller

  	
   

  	
  Print Name:    Victor K. Lee, Ph.D.

  






 




	
  Title:    Pres + CEO

  	
   

  	
  Title:    Assistant Secretary

  






 


 


 


 


Signature Page to Amendment No. 1 to Assignment Agreement


 


 


[***] 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.