Exhibit
10.24


 


 


LICENSE AGREEMENT


 


This License Agreement
(the “Agreement”), effective as of
July 1, 2007  (the “Effective
Date”), is by and between Applera Corporation, a Delaware
corporation, through its Celera Group, having offices at 1401 Harbor Bay Parkway,
Alameda, California 94502 (“Celera”), and
Siemens Medical Solutions Diagnostics, a California corporation, having offices
at 511 Benedict Avenue, Tarrytown, New York 10591 (“Siemens”).
Each of Celera and Siemens hereafter shall be referred to individually as a “Party” and, collectively, as the “Parties”.


 


WHEREAS, Celera owns
Real-Time Apparatus Patent Rights and Livak Patent Rights as defined below;


 


WHEREAS, Siemens has
requested worldwide license rights under the foregoing patent rights; and


 


WHEREAS, Celera is
prepared to grant license rights under the foregoing patent rights in the HIVD
Field, as defined below.


 


NOW, THEREFORE, in
consideration of the recitals set forth above and the terms and conditions set
forth below, the Parties agree as follows:


 


1.             Definitions


 


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


 


1.1           “Affiliate”
means:


 


(a)           a Person of which
fifty percent (50%) or more of the voting stock is controlled or owned directly
or indirectly by either Party;


 


(b)           a Person which
directly or indirectly owns or controls fifty percent (50%) or more of the
voting stock of either Party;


 


(c)           a Person, the
majority ownership of which is directly or indirectly common to the majority
ownership of either Party to this Agreement; and


 


(d)           an organization
under (a), (b), or (c) above in which the amount of said ownership is less
than fifty percent (50%) and that amount is the maximum amount permitted
pursuant to the law governing the ownership of said organization.


 


1.2           “Arm’s-Length
Sale” means a sale of Licensed Reagent Products to an unrelated
Third Party end-user in which (a) such end-user does not enjoy any special
course of dealing with Siemens or its Affiliates, (b) such end-user does
not provide any non-monetary consideration for the Licensed Reagent Products,
and (c) the gross invoice price of the Licensed Reagent Products 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
of this Agreement.


 


1.3           “First Commercial Sale” shall mean the first sale, placement or lease of the first Licensed
Real-Time Thermal Cycler or Licensed Reagent Product by Siemens, or an 


 


[***] 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.


 


1

















 


 


Affiliate
or a distributor, anywhere in the world to a Third Party, excluding any sale,
placement or lease for experimental, test marketing, or promotional purposes.


 


1.4                                 “Human In Vitro Diagnostic Field”  or “HIVD Field” means the in vitro measurement, observation, and/or determination of
attributes, characteristics, diseases, traits or other conditions of a human
being for the medical management of a human being, including without
limitation:  (a) genetic testing,
including determinations of genetic predisposition, for such medical
management; (b) oncology and cancer predisposition testing for such
medical management; (c) testing for tissue typing for such medical
management; (d) infectious disease detection, screening, confirmation and
monitoring for such medical management; (e) therapeutic drug monitoring;
and (f) blood screening for blood intended to be introduced into a live
human for therapeutic or diagnostic purposes. 
The HIVD Field excludes all other fields, including but not limited to,
research (except for research solely for uses reasonably related to the
development of a diagnostic product under a United States Food and Drug
Administration regulation), epidemiology (i.e., the screening or testing of
groups of people or populations for control of disease in groups of people or
for the study of patterns or causes of disease or medical conditions),
biosecurity, identity testing, forensic testing, testing and monitoring of
environmental and food samples, and, with respect to products other than
products licensed hereunder, quality assurance and quality control.


 


1.5                                 “Licensed Components” means substitute
components, modules and software that (a) are for Licensed Real-Time
Thermal Cyclers on which Siemens paid royalties to Celera pursuant to this
Agreement, and (b) the manufacture, use, sale, offer for sale or import of
which, but for the license granted herein, would infringe or contribute to the
infringement of at least one Valid Claim of any Real-Time Apparatus Patent
Right.


 


1.6                                 “Licensed Patent Rights” means Real-Time Apparatus Patent
Rights and Livak Patent Rights.


 


1.7                                 “Licensed Reagent Product” means a reagent product the
manufacture, use, importation, offer for sale or sale of which, but for the
license granted herein, would infringe or contribute to the infringement of a
Valid Claim of any Livak Patent Right. Specifically, “Licensed Reagent Product”
includes any kit, reagent or group of reagents, sold together or separately,
which provides an end-user with the essential reagents necessary to perform the
process of Livak Patent Rights. For example, (a) analyte specific reagents
(defined in 21 C.F.R. 809.10(e), 809.30, and 864.4020(a)) such as primers and
probes, and general purpose reagents (defined in 21 C.F.R. 864.4010(a)) such as
DNA polymerases, and (b) diagnostic devices or diagnostic products designed
and intended for use in accordance with 21 C.F.R. 812.2(c)(3) and/or
809.10(c)(2), are Licensed Reagent Products which are used in performing
nucleic acid amplification and detection in a real-time process.


 


1.8                                 “Licensed Real-Time Thermal Cycler” means a
Real-Time Thermal Cycler the manufacture, importation, offer for sale, sale or
use of which, but for the license granted herein, would infringe or contribute
to the infringement of at least one Valid Claim of any Real-Time Apparatus
Patent Right.


 


1.9                                 “Livak Patent Rights” means U.S. Patent Nos. 5,538,848;
5,723,591; 5,876,930; 6,030,787; 6,258,569 and 6,821,727 and all patents and
patent applications claiming 


 


[***] 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

















 


 


common priority with any
of the foregoing and all foreign counterparts of any of the foregoing patents
and patent applications.


 


1.10                           “Net Sales Price” means:


 


(a)                                  For an Arm’s-Length
Sale for money only of a Licensed Reagent Product to an unrelated Third Party
end-user by Siemens or its Affiliate, the gross invoice price to the end-user
minus the following deductions where applicable, to the extent included in the
invoice price and paid by seller: (i) actual
credited allowances to the end-user for spoiled, damaged, outdated or returned
Licensed Reagent Product, (ii) discounts allowed and taken, in
amounts customary in the trade, and (iii) sales or use taxes and duties
for particular sales.  No allowance or
deduction shall be made for commissions or collections, by whatever name known.


 


(b)                                 For a sale of a
Licensed Reagent Product to a distributor rather than an end-user, the Net
Sales Price shall be the product of (i) the Net Sales Price determined
pursuant to Section 1.10(a) using the gross invoice price to the
final distributor, multiplied by (ii) a factor of 1.50.


 


(c)                                  For a sale of a
Licensed Reagent Product to an end-user for use on an instrument under a
reagent rental program, the Net Sales Price of the Licensed Reagent Product
shall be determined pursuant to Section 1.10(a) using the gross
invoice price less twenty-five percent (25%) (“RAP Deduction”).  The RAP Deduction will only apply to sales to
end-users under a reagent rental program and only during the term of such
reagent rental program and will not apply to sales to such end-users after the
reagent rental program has expired.


 


(d)                                 For a sale or other
distribution of a Licensed Reagent Product that is not subject to Section 1.10(a),
(b) or (c) (including, but not limited to, transfer to a Third Party
end-user that is not an Arm’s-Length Sale), the Net Sales Price shall be the
“Average Net Sales Price.”  As used
herein the term “Average Net Sales Price” means:


 


(i)                                   the
average of Net Sales Price for transfers under Section 1.10(a) over
the one year period preceding the date of the transfer subject to this Section 1.10(d) of
the same type and model of Licensed Reagent Product and in the same country as
such transferee; or


 


(ii)                                if
data is unavailable under subpart (i), then the fair market value (with
reference to the sales price of comparable products).


 


In the event that
Licensed Reagent Product is consumed by Siemens or its Affiliate as an
end-user, then Section 3.3(c) applies.


 


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


 


1.12                           “Real-Time Apparatus Patent Rights” means
those particular claims or pending claims of U.S. patents and pending patent
applications owned by Celera as of the Effective Date that claim a Real-Time
Thermal Cycler or a component thereof, and/or, to the extent not expressly
excluded pursuant to Section 1.12(1)-(5), any method 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.


 


3

















 


 


manufacturing a Real-Time
Thermal Cycler or a component thereof or any method of testing, calibrating or
operating a Real-Time Thermal Cycler or a component thereof.  Real-Time Apparatus Patent Rights expressly includes,
without limitation:


 


(a)                                  all claims in each of
U.S. Patent Nos. 6,814,934; 6,703,236; 5,656,493; 5,475,610; 5,333,675; and
5,038,852;


 


(b)                                 claims 12-24, 27 and
28 in U.S. Patent No. 5,928,907;


 


(c)                                  any claims in foreign
counterpart patents and patent applications directed to the subject matters of
the claims referred to in Section 1.12(a) and 1.12(b) above,
including, without limitation, EP 0872562 B1; and


 


(d)                                 any and all claims in continuations, continuations-in-part (except for claimed subject
matter outside the scope of  Sections
1.12(a)-(c) above), divisions, and additions of the aforesaid patent applications, and any and all patents issuing
from the aforesaid patent applications, and any reexaminations,
reissues, substitutions, and extensions of the foregoing, all to the extent
they are directed to the subject matters of the claims referred to in Sections
1.12(a) and 1.12(b) above.


 


Notwithstanding anything herein to the contrary,
“Real-Time Apparatus Patent Rights” expressly excludes:


 


(1)                                  any
claims of any patents and patent applications that cover real-time chemistry,
reagents, reagent-containing kits, reagent-containing systems, and methods
employing particular real-time chemistry, that an instrument user, including
Siemens, may otherwise wish or need for the performance of amplification and
detection methods, including without limitation, real-time detection methods,
utilizing Licensed Real-Time Thermal Cyclers;


 


(2)                                  all claims in each of
(i) U.S. Patent Nos. 6,153,426; 6,818,437; 6,638,761; and RE39,566; (ii) U.S.
Patent Application 2005-0151972; and (iii) European Patent EP 1216098;


 


(3)                                  claims 1-11, 25 and
26 in U.S. Patent No. 5,928,907;


 


(4)                                  any claims in foreign
counterpart patents and patent applications directed to the subject matters of
the claims referred to in Sections 1.12(2) and 1.12(3) above; and


 


(5)                                  any and all claims in continuations, continuations-in-part (to the extent they claim
subject matter within the scope of Sections 1.12(2)-(4) above), divisions,
and additions of the aforesaid patent
applications, and any and all patents issuing from the aforesaid patent
applications, and any reexaminations, reissues, substitutions, and
extensions of the foregoing, all to the extent they are directed to the subject
matters of the claims referred to in Section 1.12(2) and 1.12(3) above.


 


1.13                           “Real-Time Thermal Cycler” means 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 


 


[***] 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

















 


 


opening the reaction
chambers (e.g. tubes, microtitre plates, wells or depressions) in which nucleic
acid amplification is occurring.  In
addition, a Real-Time Thermal Cycler in the HIVD Field must fulfill the following
criteria:


 


(A)(i) when sold or used in the United States, it
is designed, developed and manufactured in accordance with the Quality System
Regulation (as promulgated by the United States Food and Drug Administration,
and set forth in 21 C.F.R. Part 820, and as may be amended from time to
time), (ii) when sold or used in the European Union, it is 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) and is certified to be compliant with European
Directives on in vitro diagnostic medical devices, including, without
limitation, European Directive 98/79/EC (collectively, IVD-D), and (iii) when
sold or used in other jurisdictions, it satisfies the applicable regulatory
requirements relating to human in vitro diagnostic products;


 


(B) it is designed, configured, promoted,
intended for use, and used with a menu of Siemens-provided diagnostic kits that
(i) when sold or used in the United States, have been cleared under 21
U.S.C. 360(k) or approved under 21 U.S.C. 360e for diagnostic purposes by
the United States Food and Drug Administration and are promoted, intended for
use, and sold only for the cleared or approved purpose(s), (ii) when sold
or used in the European Union, 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) and
are certified to be compliant with European Directives on in vitro diagnostic
medical devices, including, without limitation, European Directive 98/79/EC
(collectively, IVD-D), and (iii) when sold or used in other jurisdictions,
are approved, compliant or are otherwise cleared by the appropriate regulatory
authority that regulates in vitro diagnostic devices for the designated
diagnostic uses in each other jurisdiction where such diagnostic kits are sold;
and


 


(C) in the United
States, it may also be designed, configured, promoted and intended for use with
Siemens-provided analyte specific reagents (with or without general purpose
reagents), and with diagnostic devices that are reagents and/or diagnostic
products that are reagents, as such terms are defined in 21 C.F.R. 809.10(e),
809.30, 864.4020(a), 864.4010(a), 812.2(c)(3) and/or 809.10(c)(2).


 


1.14                           “Thermal Cycler” means an instrument,
whether in single or multiple modules, that is capable in itself of
automatically cycling samples in the polymerase chain reaction (PCR) process,
including any controlling hardware and software.


 


1.15                           “Territory” means worldwide.


 


1.16                           “Third Party” means a Person other than
Siemens or Celera or their Affiliates.


 


1.17                           “Valid Claim” means a claim of an issued
unexpired patent that has not been disclaimed or revoked or held unpatentable,
invalid or unenforceable pursuant to a final and unappealable decision of a
court or other applicable administrative agency with appropriate jurisdiction.


 


[***] 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.


 


5

















 


 


2.             Grant


 


2.1                                 Rights
for Licensed Real-Time Thermal Cyclers. 
Upon the terms and subject to the exceptions and conditions of this
Agreement, Celera grants to Siemens a nonexclusive license under Real-Time
Apparatus Patent Rights to develop, make, use, import, offer for sale, and sell
Licensed Real-Time Thermal Cyclers and Licensed Components in the HIVD Field
and in the Territory.  The license
granted in this Section 2.1 does not include the right to have Licensed
Real-Time Thermal Cyclers or Licensed Components made by Third Parties,
provided, however, that Siemens may have its first to be commercialized
Licensed Real-Time Thermal Cycler and upgrades thereof (which do not change the
fundamental operating principle of such first to be commercialized Licensed
Real-Time Thermal Cycler), made by Stratagene Corporation or its successor(s),
e.g., the successor in the announced acquisition by Agilent Technologies Inc.


 


2.2                                 Rights
for Licensed Reagent Products.  Upon
the terms and subject to the exceptions and conditions of this Agreement,
Celera grants to Siemens a nonexclusive license under Livak Patent Rights to
make, have made, use, import, offer for sale, and sell Licensed Reagent
Products in the HIVD Field and in the Territory.


 


2.3                                 Sale
and Distribution.  Under the licenses
granted in Sections 2.1 and 2.2, Siemens may only offer for sale, sell and
otherwise distribute Licensed Real-Time Thermal Cyclers, Licensed Components
and Licensed Reagent Products: (a) directly to end-users, (b) to
end-users through Siemens’ Affiliates, or (c) to end-users through one or
more local Third Party distributors that are neither (i) engaged in the
global sales of products in the HIVD Field, nor (ii) Affiliates of any
Person that is engaged in the global sales of products in the HIVD Field, nor (iii) engaged
in activities that infringe Licensed Patent Rights in the United States,
Canada, the United Kingdom, France, Germany, Italy, the Netherlands, Spain or
Portugal.


 


2.4                                 Trademark;
Co-Marketing.  Under the licenses
granted in Sections 2.1 and 2.2, Siemens may only offer for sale, sell and
otherwise distribute Licensed Real-Time Thermal Cyclers, Licensed Components
and Licensed Reagent Products under Siemens’ name and trademarks, provided,
however, that Siemens’ first to be commercialized Licensed Real-Time Thermal
Cycler, and upgrades thereof, may be
co-branded with Stratagene Corporation or its successor(s), e.g., the successor
in the announced acquisition by Agilent Technologies Inc.  Siemens shall not make any arrangement or
enter into any agreement with a Third Party or an Affiliate of a Third Party,
either of which is engaged in the global sales of products in the HIVD Field,
in order for such Third Party or its Affiliate to act as a co-marketer with
Siemens of Licensed Real-Time Thermal Cyclers or Licensed Reagent Products or
both.


 


2.5                                 No
Sublicense.  The licenses granted in
Sections 2.1 and 2.2 do not include any right to grant sublicenses.  Notwithstanding the foregoing, Siemens may
exercise the rights granted under this Agreement through one or more Affiliates
as long as they remain Affiliates and abide by the obligations of this
Agreement, except that Siemens shall report and pay royalties under this
Agreement on behalf of such Affiliates.


 


2.6                                 Covenant
for Licensed Reagent Products. 
Celera hereby covenants not to assert against Siemens, its Affiliates,
distributors or customers any patent owned, or issuing from a patent
application owned, by Celera as of the Effective Date that would 


 


[***] 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.


 


6

















 


 


necessarily be infringed
(i.e., no non-infringing alternatives) by the practice of the Livak Patent
Rights in the HIVD Field pursuant to the license granted under this Agreement.


 


2.7                                 No
Other Patent Rights Granted.  Other
than the Licensed Patent Rights and subject to the covenant in Section 2.6,
no rights are granted expressly, by implication or by estoppel under any other
patents owned by Celera or its Affiliates.


 


3.             Fees,
Royalties, Records and Reports


 


3.1                                 Issuance
Fee.  Siemens shall pay to Celera a
fee of twenty-four million U.S. dollars (US $24,000,000), not creditable
against royalties (defined below), payable in ten (10) quarterly
installments of two million, four hundred thousand U.S. dollars (US $2,400,000)
each (such quarterly installments once made shall be non-refundable).  Siemens shall pay the first installment
(which is due for the quarterly period commencing July 1, 2007) to Celera
within fifteen (15) days after the date the last Party signs this Agreement and
pay each subsequent installment on the 10th day of each subsequent
calendar quarter until all ten installments have been paid (“Payment
Period”).  For the avoidance of doubt,
assuming the Agreement is signed in September 2007, the second installment
will be payable on 10 October 2007, the third installment will be payable
on 10 January 2008, and so on.


 


3.2                                 Licensed
Real-Time Thermal Cycler.


 


(a)                                  Siemens shall pay to
Celera a royalty of [***] for each Licensed Real-Time Thermal Cycler that (i) is
sold, placed, leased or otherwise transferred by or for Siemens after the
Effective Date and (ii) the manufacture, use, sale or placement of which
is covered by a Valid Claim in U.S. Patent No. 6,814,934 (the “ ‘934
Patent”), European Patent EP 0872562 B1 (the “ EP ‘562 Patent”), or any patent
in other countries directly or indirectly claiming priority to or having common
priority with (“Counterpart”) either of the foregoing patents (the ‘934 Patent,
the EP ‘562 Patent, and any Counterparts together constituting “Principal
Patent Rights”) .  To be clear, such
royalty payment under this Section 3.2(a) is triggered by sale,
placement, lease or transfer of each operable Real-Time Thermal Cycler unit
covered by a Valid Claim of  Principal
Patent Rights in the country of manufacture or in the country of use, sale,
placement, lease or transfer or in both countries.  As provided in greater detail in Sections 3.2(d) and
(e) below, Licensed Real-Time Thermal Cyclers that are manufactured and
sold where neither manufacture nor sale (a) is covered by a Valid Claim of
a Principal Patent Right, but (b) is covered by a Valid Claim in any
remaining Real-Time Apparatus Patent Rights, shall be subject to a royalty of
[***] per Licensed Real-Time Thermal Cycler unit.  [***] 
will be payable on each Licensed Real-Time Thermal Cycler regardless of
the number of Real-Time Apparatus Patent Rights implicated.


 


(b)                                 A sale, placement, lease or other transfer of a
Licensed Real-Time Thermal Cycler shall be deemed to have been made when such
transaction is invoiced to a Third Party or otherwise recorded by Siemens,
whichever occurs first.  Sales, placement,
leases or other transfers of Licensed Real-Time Thermal Cyclers between or
among Siemens and its Affiliates shall not be subject to the royalty 


 


[***] 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.


 


7

















 


 


                                                obligation of Section 3.2(a) (except as
provided in Section 3.2(h)); however, such Licensed Real-Time Thermal
Cycler once sold, placed, leased or otherwise transferred by Siemens or an
Affiliate to a Third Party shall be subject to the royalty obligation of Section 3.2(a).


 


(c)                                  No royalty will be
payable on Licensed Components sold or transferred by or for Siemens for
Licensed Real-Time Thermal Cyclers on which Siemens paid royalties pursuant to Section 3.2(a) or
3.2(h).


 


(d)                                 Upon the expiration of
the ‘934 Patent, or in the event that there is no longer a Valid Claim in the
‘934 Patent covering a particular Licensed Real-Time Thermal Cycler or its
manufacture, the royalty amount specified in Section 3.2(a) shall be
reduced to [***] for each such Licensed Real-Time Thermal Cycler that
thereafter is made in the United States and sold or placed in a country
(including the United States) where there is a Valid Claim under any remaining
Real-Time Apparatus Patent Rights that covers such Licensed Real-Time Thermal
Cycler.  For the avoidance of doubt, even
after the ‘934 Patent expires or no longer contains a Valid Claim covering such
particular Licensed Real-Time Thermal Cycler or its manufacture, the [***] per
unit royalty under Section 3.2(a) shall nonetheless continue to apply
to any such Licensed Real-Time Thermal Cycler made in the United States but
sold or placed in a country where the EP ‘562 Patent or a Counterpart contains
a Valid Claim covering such Licensed Real-Time Thermal Cycler.


 


(e)                                  Upon the date of
expiration of the EP ‘562 Patent, or in the event that there is no longer a
Valid Claim in the EP ‘562 Patent covering a particular Licensed Real-Time
Thermal Cycler or its manufacture, the royalty amount specified in Section 3.2(a) will
be reduced to [***] for each such Licensed Real-Time Thermal Cycler that
thereafter is made in a Designated Contracting State (i.e., country in which
the EP ‘562 Patent had effect) and sold or placed in a country (including such
Designated Contracting State) where there is a Valid Claim under any remaining
Real-Time Apparatus Patent Rights that covers such Licensed Real-Time Thermal
Cycler.  For the avoidance of doubt, even
after the EP ‘562 Patent expires or no longer contains a Valid Claim covering
such particular Licensed Real-Time Thermal Cycler or its manufacture, the [***]
per unit royalty under Section 3.2(a) shall nonetheless continue to
apply to any such Licensed Real-Time Thermal Cycler made in a Designated
Contracting State but sold or placed in a country where the ‘934 Patent or a
Counterpart contains a Valid Claim covering such Licensed Real-Time Thermal
Cycler.


 


(f)                                    Reduction of the
royalty amount pursuant to Section 3.2(d) or (e) will not affect
the royalty amount payable on sales or transfers in other territories.  Thus, for example, after expiration of the
‘934 Patent, sales of Licensed Real-Time Thermal Cyclers in Europe will be
subject to the full payment required by Section 3.2(a) if covered by
a Valid Claim in the EP ‘562 Patent.


 


(g)                                 Nothing in this Section 3.2
is intended to require payment of royalties on any Real-Time Thermal Cycler the
manufacture, use or sale of which is not covered by a Valid Claim of a Real-Time
Apparatus Patent Right. Thus, for 


 


[***] 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.


 


8

















 


 


                                                example, if, after expiration of the EP
‘562 Patent, no remaining Real-Time Apparatus Patent Right covers the manufacture, use or sale of Real-Time
Thermal Cyclers in Europe, no royalties will be payable on sales, lease or placement
in Europe of Real-Time Thermal Cyclers unless they are made under a Valid Claim
of a Real-Time Apparatus Patent Right in another territory.


 


(h)                                 In the event that
Siemens or an Affiliate operates a laboratory which bills Third Parties for
performance of assays by Siemens or such Affiliate using a Licensed Real-Time
Thermal Cycler in the HIVD Field, Siemens shall pay to Celera a royalty of
[***] for each such Licensed Real-Time Thermal Cycler upon transfer of any
Licensed Real-Time Thermal Cycler to such laboratory.


 


3.3                                 Licensed
Reagent Product.


 


(a)                                  Siemens shall pay to
Celera [***] of the Net Sales Price of all Licensed Reagent Products sold,
transferred, used or otherwise disposed of by or for Siemens.


 


(b)                                 A sale shall be deemed to have been made when
such transaction is invoiced to a Third Party. 
Except as provided in Section 3.3(c), sales of Licensed Reagent
Product between or among Siemens and its Affiliates shall not be included in
Net Sales Price; however, such Licensed Reagent Product once sold by Siemens or
an Affiliate to a Third Party shall be included in Net Sales Price.


 


(c)                                  In the event that
Siemens or an Affiliate operates a laboratory which bills Third Parties for
performance of an assay by Siemens or such Affiliate using a Licensed Reagent
Product in the HIVD Field, the Net Sales Price for such Licensed Reagent
Product shall be equal to the average per unit Net Sales Price for sales of
such Licensed Reagent Product in the country in which such assay is performed
during the quarter in which such assay is performed, or, if such Licensed
Reagent Product is not sold for commercial use in such country during such
quarter, the worldwide average per unit Net Sales Price for sales of such
Licensed Reagent Product for such quarter, or, if such Licensed Reagent Product
is not sold commercially in any country, 25% of the gross revenue invoiced by
the laboratory for performance of the assay. 
For purposes of this Section 3.3(c), the Licensed Reagent Product
will be deemed sold on the date that its use by the laboratory is invoiced to
the Third Party.


 


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 using the method used by Siemens for internal
financial reporting purposes in accordance with United States generally
accepted accounting principles, consistently applied.


 


3.5                                 Maintenance
of Records; Audit.  Siemens 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 Celera under this Agreement and to demonstrate Siemens’ (and its
Affiliates’) compliance with its obligations under this Agreement for five (5) years
after the close of each calendar year. 
Upon thirty (30) days prior written request of Celera, and not more than
once per calendar year, such records and 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.


 


9

















 


 


                                                supporting
data shall be open during ordinary business hours, for five (5) years
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 Celera (and reasonably
approved in advance by Siemens).  Such
accounting firm will hold such records and supporting data in strict
confidence, and shall provide to Celera only the information necessary to
verify the calculation of amounts due hereunder, providing to Siemens a copy of any preliminary and final
reports contemporaneously with providing such reports to Celera.  Such reports to Celera shall be limited to a
description of the procedures performed, whether Siemens’ calculations are
accurate, and a description of any discrepancies in sufficient detail to permit
the Parties to discuss appropriate remedies while preserving to the greatest
extent possible the confidentiality of business sensitive information of
Siemens.  If in dispute, such records
shall be kept until the later of five (5) years or the dispute is
settled.  Inspection shall be at Celera’s
expense, unless the inspector concludes that the amount payable over the entire
period audited is understated by five percent (5%) or more, in which case the
reasonable cost of the audit shall be paid by Siemens.


 


3.6                                 Royalty
Payments and Royalty Reports. 
Beginning after the First Commercial Sale, Siemens shall within thirty
(30) days after the first of January, April, July and October deliver
to Celera the monies then due under Sections 3.2 and 3.3 for the preceding
quarter and a true and accurate accounting report in accordance with this Section 3.6.  The report shall state for the relevant
calendar quarter:


 


(a) For Licensed
Real-Time Thermal Cyclers (i) the number sold, placed, leased or
transferred (x) under a reagent rental program in each of the United
States, Europe, and the rest of the world, (y) not under a reagent rental
program in each of the United States, Europe, and the rest of the world, and (z) to
laboratories operated by Siemens or its Affiliates, and (ii) the
calculation of royalties due on Licensed Real-Time Thermal Cyclers in each of
the United States, Europe and the rest of the world, and


 


(b) For Licensed
Reagent Products (i) the Net Sales Price for Arm’s-Length Sales pursuant
to Section 1.10(a) for those sales not made under then current
reagent rental program, (ii) the calculation of Net Sales Price for
distributors pursuant to Section 1.10(b), (iii) the calculation of
Net Sales Price pursuant to Section 1.10(c), (iv) the calculation of
the Average Net Sales Price pursuant to Section 1.10(d), and (v) the
calculation of Net Sales Price pursuant to Section 3.3(c), and (vi) the
calculation of royalties due on Licensed Reagent Products.


 


3.7                                 Tax
Withholding.  Withholding tax, if
any, levied by a government of any country on amounts received by Siemens,
shall be borne by Siemens. No payment made by Siemens to Celera pursuant to the
terms of this Agreement shall be reduced for any taxes.


 


3.8                                 Royalty
Report and Payment Address.  Each
report shall be sent by the due date to the following address:


 


Celera


1401 Harbor Bay Parkway


Alameda, California, 94502 U.S.A.


Attention: Controller,
Finance Department


 


 


[***] 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.


 


10

















 


 


or to any
address that Celera may advise in writing. 
In addition, Siemens agrees to promptly provide an electronic copy of
any such report by e-mail upon written request by Celera.


 


Each payment
shall be sent by wire transfer on the due date to the following account:


 


	
  Beneficiary
  Bank:

  	
   

  	
  JPMorgan
  Chase

  
	
   

  	
   

  	
  New York, NY

  
	
  ABA No.

  	
   

  	
  021-000-021

  
	
  Swift Code:

  	
   

  	
  CHASUS33

  
	
  Account
  Name:

  	
   

  	
  Applera
  Corporation

  
	
  Account No.

  	
   

  	
  304-165-255

  
	
  For Benefit
  Of:

  	
   

  	
  Celera

  
	
  Reference:

  	
   

  	
  License
  Agreement

  



 


3.9                                 Interest.  If Siemens fails to pay any amount owing
under this Agreement by the due date, the amount owed shall bear interest,
compounded quarterly, at the relevant 90 Day LIBOR lending rate as published by
the Wall Street Journal 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


 


4.1                                 Patent
Notice.  Siemens shall mark each
Licensed Real-Time Thermal Cycler and include prominently in the front of the
corresponding user’s manual, but not any other Thermal Cycler or manual
therefor, a Notice to User as follows:


 


NOTICE TO USER


 


This
instrument is licensed for use solely in the field of human in vitro
diagnostics under Applera Corporation’s United States Patent No. 6,814,934
and corresponding claims in non-U.S. counterparts thereof.  No other field of use 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.


 


From time to
time during the term hereof, Celera may request reasonable changes to such
Notice, and Siemens shall implement such reasonable changes in a manner and in
such time as is reasonable in the context of the Siemens products and
processes.


 


4.2                                 Patent
Marking.  Siemens shall mark each
Licensed Real-Time Thermal Cycler, each Licensed Component and each Licensed
Reagent Product with the applicable patent numbers in Licensed Patent Rights in
accordance with applicable law.


 


5.             Term
and Termination


 


5.1                                 Term.  This Agreement (and the licenses and royalty
obligations hereunder), unless sooner terminated pursuant to this Article 5,
shall continue until the date of expiration 


 


[***] 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.


 


11

















 


 


                                                of
the last-to-expire of the Licensed Patent Rights and the patent rights that are
the subject of the covenant set forth in Section 2.6.


 


5.2                                 Termination
by Siemens.  Siemens may terminate
this Agreement for any reason by giving written notice to Celera and ceasing to
label, advertise or promote its Real-Time Thermal Cyclers as Licensed Real-Time
Thermal Cyclers and ceasing to distribute Licensed Components and Licensed
Reagent Products.  Such termination shall
be effective forty-five (45) days after said notice (“Sec. 5.2 Effective
Termination Date”), during which time Siemens shall either sell or destroy its
remaining inventory of Licensed Real-Time Thermal Cyclers, Licensed Components
and Licensed Reagent Products.  Within
fifteen (15) days after such termination, Siemens shall provide Celera with a
royalty report and payment as per Article 4 along with a certification
signed by a company officer that Siemens no longer has any inventory of
Licensed Real-Time Thermal Cyclers, Licensed Components or Licensed Reagent
Products.  In the event Siemens
terminates this Agreement pursuant to this Section 5.2, all installments
due pursuant to Section 3.1 after the Sec. 5.2 Effective Termination Date
will be cancelled, provided, however, that Siemens pays to Celera all
installments due before the Sec. 5.2 Effective Termination Date.


 


5.3                                 Partial
Termination.  In the event there is
no Valid Claim in U.S. Patent No. 6,814,934 or in European Patent EP
0872562 B1, Siemens may elect to terminate the license in the territory covered
by either patent (U.S. or Europe) without terminating this Agreement in its
entirety by providing written notice to Celera. 
Such termination shall be effective forty-five (45) days after said
notice (“Sec. 5.3 Effective Termination Date”). In the event Siemens partially
terminates this Agreement in a territory (U.S. or Europe) pursuant to this Section 5.3,
all installments due pursuant to Section 3.1 after the Sec. 5.3 Effective
Termination Date will be reduced by [***], provided, however, that Siemens pays
to Celera the full amount of all installments due before the Sec. 5.3 Effective
Termination Date.  Partial termination by
Siemens of the license under U.S. Patent No. 6,814,934 in the U.S. or
European Patent EP 0872562 B1 in Europe will not affect the license under
remaining Real-Time Apparatus Patent Rights in the same territory, the
Real-Time Apparatus Patent Rights in the other territory, and the Livak Patent
Rights in either territory.


 


5.4                                 Insolvency.  This Agreement shall terminate immediately
without Siemens having a right to cure upon (i) an adjudication of Siemens
as bankrupt or insolvent, or Siemens’ admission in writing of its inability to
pay its obligations as they mature; (ii) an assignment of any of its
rights or obligations under this Agreement by Siemens for the benefit of
creditors; (iii) the appointment of, or Siemens’ applying for or
consenting to the appointment of, a receiver, trustee or similar officer for a
substantial part of its property; (iv) the institution of or any act of
Siemens instituting any bankruptcy, insolvency arrangement, or similar
proceeding; or (v) the issuance or levy of any judgment, writ, warrant or
attachment or execution or similar process against a substantial part of the
property of Siemens.


 


5.5                                 Termination
for Siemens’ Material Breach.  In the
event Siemens materially breaches this Agreement, then without limiting
Celera’s legal or equitable remedies, this Agreement shall terminate
automatically sixty (60) days after Celera provides notice thereof to Siemens
provided that Siemens fails to cure such material breach within such sixty (60)
day period.  Any failure by Siemens to
perform any payment obligation, or provide a timely and compliant royalty
report, as and when due under 


 


[***] 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.


 


12






 










 


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 material failure under
this sentence shall not be subject to cure, if Celera so specifies in its
notice to Siemens.


 


5.6                                 Termination
on Challenge.  Celera may terminate
this Agreement in all countries in the Territory where such termination is
legally permissible and enforceable under applicable  law, effective immediately upon written
notice of termination to Siemens, in the event that Siemens, either directly or
indirectly, initiates, engages, assists others or participates in a challenge
to the validity, enforceability or priority (whether by or through a
declaratory judgment action, interference, reexamination, opposition, nullity
or other action or proceeding) of any of the Licensed Patent Rights in any
country in the Territory.


 


5.7                                 Effect
of Termination or Expiration.  Upon
termination or expiration of this Agreement, all rights granted to Siemens
shall revert to or be retained by Celera.


 


5.8                                 Siemens’
Obligations Surviving Termination. 
The following rights and obligations shall survive termination or
expiration of this Agreement:  (a) Siemens’
obligations to (i) report and pay accrued fee installments and royalties
under this Agreement, (ii) maintain
confidentiality as provided under Section 6.2, and (iii) maintain
records required for the purposes of Section 3.5; and (b) Celera’s
right to audit under Section 3.5.


 


6.             Advertisements;
Publicity; Confidentiality


 


6.1                                 Advertisements.  Siemens shall not promote, e.g., in
advertisements, catalogs, brochures, sales literature and promotional
literature, the use of Licensed Real-Time Thermal Cyclers or Licensed Reagent
Products in fields outside of the HIVD Field. In the event that Siemens learns
or is given notice that Licensed Real-Time Thermal Cyclers or Licensed Reagent
Products are being used substantially by a Third Party purchaser outside of the
HIVD Field, Siemens must, within thirty (30) days after learning of such use,
send written notice to such Third Party purchaser, with a copy to Celera, that
such off-label use is contrary to the Section 4.1 Notice to User. Nothing
herein is intended to, or should be construed to, restrict Celera and its Affiliates
in enforcing its patents rights against such Siemens’ Third Party purchaser for
any off-label use at any time.


 


6.2                                 Confidentiality.  Each Party 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 the other Party, except
to the extent: (a) such disclosure is required under applicable law or
regulation, or by subpoena, order or other requirement of a court,
administrative agency, or other competent governmental body, provided that (i) such
disclosure is limited to the information that must be so disclosed under such
applicable law or regulation or subpoena, order or other requirement; and (ii) the
affected Party notifies the other Party of such requirement and the text of the
proposed disclosure at least thirty (30) days before such proposed disclosure
is required or in any event as far in advance of the date of disclosure as is
reasonably possible and allows such other Party a reasonable opportunity to
comment upon, object or seek a 


 


[***] 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

















 


 


protective
order or other injunctive relief to prevent or limit such disclosure, or (b) reasonably necessary to be disclosed in
connection with due diligence related to a possible acquisition, merger,
consolidation, substantial asset transfer, or similar transaction of a Party,
provided that the Third Party recipient is bound to respect to the confidential
information disclosed by legal obligations no less restrictive that those set
forth herein. The Parties have agreed to the text of an initial press
release regarding the grant of the license hereunder, a copy of which is
attached hereto as Exhibit 6.2. 
Notwithstanding the above, the Parties may disclose to any Third Party
for any reason the existence of this Agreement and its scope as embodied in
Sections 1.4, 1.6, 1.7, 1.8, 1.9, 1.12, 1.13, 1.14, 2.1, 2.2, 2.3, 2.3,  2.5, and 2.6.


 


7.             Compliance
and Quality


 


7.1                                 Compliance
with Applicable Law.  In the exercise
of any and all rights and in performance hereunder, it shall be the duty of
Siemens, not Celera, 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 to
carry on activities hereunder.


 


7.2                                 No
Endorsement.  Celera does not approve
or endorse any Real-Time Thermal Cycler of Siemens in any way or for any
purpose, including for real-time PCR. 
Quality and quality control with respect to 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 Siemens.


 


8.             Assignment


 


8.1                                 Assignment
by Siemens.  This Agreement (and the
licenses granted hereunder) is personal in nature.  This Agreement and the rights hereunder are
non-delegable and non-assignable by Siemens without the prior written approval
of Celera, provided, however, that Siemens may assign this Agreement, without
Celera’s prior approval, to an Affiliate or to a Third Party that acquires all
or substantially all of the assets and business of Siemens relating to the
detection, measurement or other determination of nucleic acid sequences in the
HIVD Field.  Such assignment will be effective
upon written agreement by the Affiliate or Third Party to be bound by all terms
of this Agreement and to assume all Siemens liabilities accrued as of the date
of such assignment.  Siemens shall give
Celera notice of the assignment and the original of such agreement by the
Affiliate or Third Party within thirty (30) days after such assignment.
Siemens’ failure to deliver to Celera notice of the assignment and the original
of such agreement by the Affiliate or Third Party within thirty (30) days of
the assignment renders such assignment void. Without limiting the foregoing,
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.  Any assignment or attempted
assignment (except as permitted under this Section 8.1) shall be void ab initio and result in the immediate and automatic
termination of this Agreement without any requirement or notice or other action
by Celera.


 


8.2                                 Assignment
by Celera.  Celera may assign all or
any part of its rights and obligations under this Agreement at any time without
the consent of Siemens.  Siemens agrees
to 


 


[***] 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.


 


14

















 


 


execute such further acknowledgements or other
instruments as Celera may reasonably request in connection with such
assignment.


 


9.             Warranties,
Representations and Indemnification


 


9.1                                 No
Warranty; No Implied Rights.  Nothing
in this Agreement shall be construed as


 


	
  (a)

  	
   

  	
  a warranty or representation by Celera as
  to the validity, enforceability or scope of any patent;

  
	
   

  	
   

  	
   

  
	
  (b)

  	
   

  	
  a warranty or representation that anything
  made, used, sold, or otherwise disposed of pursuant to this Agreement is or
  will be free from infringement of patents or other intangible rights of Third
  Parties;

  
	
   

  	
   

  	
   

  
	
  (c)

  	
   

  	
  an obligation by Celera to file any patent
  application, secure any patent, or maintain any patent in force;

  
	
   

  	
   

  	
   

  
	
  (d)

  	
   

  	
  any obligation of Celera to prosecute,
  enforce or license its patent rights to (or against) Third Party infringers;

  
	
   

  	
   

  	
   

  
	
  (e)

  	
   

  	
  except as expressly set forth herein,
  conferring upon Siemens the right to use in advertising, publicity or
  otherwise, in any form, the name of, or any trademark or trade name of,
  Applera, Celera 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 Celera other than the
  Licensed Patent Rights and any patent rights subject to the covenant in
  Section 2.6 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
  technical information; or

  
	
   

  	
   

  	
   

  
	
  (h)

  	
   

  	
  creating any agency, partnership, joint
  venture or similar relationship between Celera and Siemens.

  



 


9.2                                 EXCEPT
AS EXPRESSLY STATED HEREIN (INCLUDING SIEMENS’ INDEMNIFICATION OBLIGATIONS
UNDER SECTION 9.3 BELOW), EACH PARTY, RESPECTIVELY, DOES NOT MAKE AND
EXPRESSLY DISCLAIMS ANY 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 PATENT RIGHTS, THE
PRACTICE OF THE LICENSE HEREUNDER OR THE MAKING, USING OR SELLING OF PRODUCTS
LICENSED HEREUNDER.  IN NO EVENT WILL
EITHER PARTY OR ITS AFFILIATES BE LIABLE FOR ANY SPECIAL, PUNITIVE, INCIDENTAL
OR CONSEQUENTIAL DAMAGES (INCLUDING, WITHOUT LIMITATION LOST PROFITS).


 


9.3                                 Indemnification.  Siemens shall assume full responsibility for
its operation under the Licensed Patent Rights, the manufacture of Licensed
Real-Time Thermal Cyclers, Licensed Components and Licensed Reagent Products
and the use thereof, and shall 


 


[***] 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

















 


 


defend, indemnify and
hold Celera harmless from and against all liability, demands, damages, expenses
(including attorneys’ fees) and losses resulting or arising from (a) claims
by Third Parties of infringement or misappropriation of intellectual property rights,
or (b) claims of 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, in view of the use by Siemens, its
officers, directors, agents and employees of the Licensed Patent Rights and the
manufacture and use of Licensed Real-Time Thermal Cyclers, Licensed Components
and Licensed Reagent Products, except that Siemens shall not be liable to
Celera for injury or damage arising solely because of Celera’s negligence.


 


9.4                                 Celera
Representations and Warranties.  Celera represents and warrants to Siemens that
Celera is the sole and exclusive owner of all right, title and interest in the
Licensed Patent Rights, and such Licensed Patent Rights are not subject to any
encumbrance, lien or claim of ownership by any Third Party that would encumber
the rights granted to Siemens in this Agreement.  Celera warrants that it has the
unrestricted right and power to enter into this Agreement and to grant the
licenses provided hereunder to Siemens without conflict or creating breach or
default of any law, order of a court or governmental agency, contract, or other
obligation with any Third Party.  Celera
shall defend, indemnify and hold Siemens harmless from and against all
liability, demands, damages, expenses (including attorneys’ fees) and losses
arising from any failure or other breach of
the representations and warranties by Celera as set forth in this Section 9.4.


 


9.5                                 Siemens
Warranties.  Siemens represents and
warrants that it will not promote, e.g., in advertisements, catalogs,
brochures, sales literature and promotional literature, the use of Licensed
Real-Time Thermal Cyclers or Licensed Reagent Products in fields outside of the
HIVD Field.  Any violation of the
foregoing representation and warranty is a material breach of this Agreement.
Further, Siemens acknowledges and agrees that except for the license as set
forth herein Siemens does not have any valid licenses or valid license defense
to or under any of the Licensed Patent Rights.


 


10.          General


 


10.1                           Integration.  This Agreement and a letter to Bayer
HealthCare LLC relating to the consent from Celera to Bayer HealthCare LLC (a
copy of which is attached hereto as Exhibit 10.1) for assignment of the
Sequence Analysis License Agreement, dated April 20, 2000, as amended on July 1,
2003 and September 8, 2003, to Siemens 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.


 


10.2                           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:


 


[***] 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

















 


 


If to Celera:


 


Celera


1401 Harbor Bay Parkway


Alameda, California 94502
U.S.A.


Attention: Chief Business
Officer


Fax No.:  510-749-6200


 


If to Siemens:


 


Siemens Medical Solutions
Diagnostics


511 Benedict Avenue


Tarrytown, New York 10591
U.S.A.


 


Attention: Law &
Patents


 


Fax No.:  914-524-3594


 


Either Party
may change its address 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.


 


10.3                           Governing
Law and Venue.  This Agreement shall
be deemed made in the State of New York, and it shall be construed and enforced
in accordance with the law of the State of New York.  The Parties agree that the exclusive
jurisdiction and venue for resolving disputes arising from this Agreement shall
be in the state or federal courts in New York.


 


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


 


10.5                           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.


 


10.6                           Construction.  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.


 


[***] 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.


 


17

















 


 


10.7                           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.


 


10.8                           Waiver.  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.


 


10.9                           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.


 


10.10                     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.


 


10.11                     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.


 


10.12                     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.


 


[***] 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.


 


18

















 


 


IN WITNESS WHEREOF, The Parties
hereto have duly executed this Agreement on the date(s) indicated below.


 


 


	
   

  	
  APPLERA
  CORPORATION

  	
   

  
	
   

  	
  through its
  CELERA GROUP

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
    /s/
  Joel Jung

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  Title:

  	
  Assistant
  Controller, Applera Corporation

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  Date:

  	
      9/26/07

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  SIEMENS
  MEDICAL SOLUTIONS DIAGNOSTICS

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
    /s/
  Anthony Bihl

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  Title:

  	
  CEO

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  Date:

  	
      9/28/07

  	
   

  
						



 


[***] 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.


 


19