exv10w1






Exhibit 10.1




***Text Omitted and Filed Separately

with the Securities and Exchange Commission.

Confidential Treatment Requested

Under 17 C.F.R. Sections 200.80(b)(4)

and 240.24b-2.




Second Amendment

to the

Collaboration Agreement Dated June 11, 1998




     This Second Amendment to the Collaboration Agreement is made and entered into as of July
1, 2009 (the “Effective Date”), by and between Siemens Healthcare Diagnostics Inc. (“Siemens”), a
California corporation and the successor-in-interest to Bayer HealthCare LLC (“Bayer”), which was
successor-in-interest to Chiron Diagnostics Corporation (“CDC”), and having a principle place of
business at 1717 Deerfield Road, Deerfield, Illinois, and Gen-Probe Incorporated (“Gen-Probe”), a
Delaware corporation whose principal place of business is 10210 Genetic Center Drive, San Diego,
California. Each of Siemens and Gen-Probe are sometimes referred to herein, individually, as a
“Party” and, together, as the “Parties.”



     WHEREAS, Gen-Probe and Siemens (as successor-in-interest to CDC and Bayer) are parties to a
Collaboration Agreement, dated June 11, 1998 and a Supplemental Agreement to the Collaboration
Agreement, dated April 2, 2001 (collectively, the “Collaboration Agreement”);



     WHEREAS, on August 1,2006, Siemens, successor-in-interest to Bayer, and Gen-Probe entered
into a Sublicense Agreement covering certain TMA Qualitative Assays (“TMA Sublicense Agreement”);



     WHEREAS, on August 1, 2006, Siemens, successor-in-interest to Bayer, and Gen-Probe entered
into a Settlement Agreement to settle and resolve certain claims against each other (the
“Settlement Agreement”);



     WHEREAS, pursuant to Section 2.3 of the TMA Sublicense Agreement, Gen-Probe hereby exercises
the Option to extend the License period granted in Sections 2.1 and/or 2.2 of the TMA
Sublicense Agreement;




     WHEREAS, Siemens desires to extend the term of the Collaboration Agreement until December 31,
2015;



-1-









 




     WHEREAS, Gen-Probe desires to adjust the price of certain Products;




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



ARTICLE 1 — PRODUCTS AND PRICES




     1.1 Attached hereto as Schedule 1 is a partial list of Products (as defined in the
Collaboration Agreement). The Parties hereby agree that, effective October 1, 2010, the Transfer
Price (as defined in the Collaboration Agreement) for orders placed for the Products listed in
Schedule I is as shown in Schedule 1. For the avoidance of doubt, the Transfer Price for Products
not listed in Schedule 1 is as set out in the Collaboration Agreement, subject to adjustment as set
out in the Collaboration Agreement. The Parties hereby agree that, effective January 1, 2013, the
Transfer Price (as defined in the Collaboration Agreement) for the Products listed in Schedule 1
may be adjusted to be equal to Gen-Probe’s Manufacturing Cost plus [...***... ]%.



ARTICLE 2 — Extension of the Term of the Collaboration Agreement




     2.1 The Parties agree that the term of the Collaboration Agreement, to the extent that such
Collaboration Agreement concerns Clinical Diagnostic Products and the Clinical Diagnostic Field
(each as defined in the Collaboration Agreement) and to the extent the Collaboration Agreement
remains in effect following entry of the Stipulated Final Award, shall be extended and shall
terminate as of December 31, 2015, absent any subsequent event that may result in extension of the
term or earlier termination. For the avoidance of doubt, this Article 2 supersedes the expiration
date of October 1, 2010 set out in Section 6.4 of the Settlement Agreement.



ARTICLE 3 — Option Exercise




     3.1 Siemens hereby acknowledges Gen-Probe’s exercise of the option granted by Section 2.3 of
the TMA Sublicense Agreement to extend the License granted in Sections 2.1 and 2.2 of the TMA
Sublicense Agreement to the expiration date of the last to expire patent in the Licensed Patent



***Confidential Treatment Requested




-2-









 




Rights.




     3.2 In consideration of Gen-Probe’s execution of this Second Amendment, Siemens waives the
requirement of Section 2.3 of the TMA Sublicense Agreement that Gen-Probe pay a one-time initial
license fee of One Million Dollars ($1,000,000.00) in connection with the option exercise.



ARTICLE 4 — Miscellaneous




     4.1 Except as expressly amended by this Second Amendment to the Collaboration Agreement, the
Collaboration Agreement and Settlement Agreement remains in full force and effect.



     IN WITNESS WHEREOF, the Parties have duly signed and have made delivery to the other.



	 	 	 	 	 	 	 	 	 	 	 
	SIEMENS HEALTHCARE

   DIAGNOSTICS INC.	 	 	 	GEN-PROBE INCORPORATED	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	/s/ David Okrongly
 

	 	 
	 	By:
	 	/s/ Carl W. Hull
 

	 	 
	Name: David Okrongly	 	 	 	Name: Carl W. Hull	 	 
	Title: SVP, Molecular Diagnostics	 	 	 	Title: President & CEO	 	 
	Date: 10 August 2009	 	 	 	Date: 10 August 2009	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	/s/ Fernando Beils
 

	 	 	 	 	 	 	 	 
	Name: Fernando Beils	 	 	 	 	 	 	 	 
	Title: Vice President, Finance	 	 	 	 	 	 	 	 
	POC & Molecular	 	 	 	 	 	 	 	 











-3-









 








Schedule 1




	 	 	 	 	 	 	 	 	 
	Customer	 	 	 	 	 	Current	 	New
	Name	 	Material #	 	Material Description	 	Price	 	Price
	SIEMENS HEALTHCARE DIAG., INC
	 	301061E-01	 	KIT, VERSANT, HCV QL, FROZEN	 	[...***... ]	 	[...***... ]
	 
	 	301061-01	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	301062E-01	 	KIT, VERSANT, HCV QL, 2 TO 8 (TCR)	 	[...***... ]	 	[...***... ]
	 
	 	301062-01	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	301063E-01	 	KIT, VERSANT HCV QL, 15 TO 30C (Ambient Kit)	 	[...***... ]	 	[...***... ]
	 
	 	301063-01	 	 	 	 	 	 
	 
	 	 	 	Subtotal, 100 tests	 	[...***... ]	 	[...***... ]
	 
	 	301064E-01	 	KIT, VERSANT HCV QL, DETEC RGT 

(500 tests)	 	[...***... ]	 	[...***... ]
	 
	 	301064-01	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	Total, 500 tests	 	[...***... ]	 	[...***... ]
	 
	 	 	 	 	 	 	 	 
	 
	 	PLR0353	 	PROBE RGT,QUANT HCV,NON-BB,ASR	 	[...***... ]	 	[...***... ]
	 
	 	PLR0352	 	SOLN,PSEUDO-TARGET,QUANT HCV	 	[...***... ]	 	[...***... ]
	 
	 	 	 	 	 	 	 	 
	 
	 	104982E-01	 	BAYER LHC+	 	[...***... ]	 	[...***... ]
	 
	 	104991	 	Bayer Target Capture System (TCS)	 	[...***... ]	 	[...***... ]
	 
	 	901780	 	Operator’s Manual: Target Capture System	 	[...***... ]	 	[...***... ]
	 
	 	901779
	 	System Admin Manual: HC+ TMA DRS, 
IVD 	 	[...***... ]	 	[...***... ]
	 
	 	901778	 	Operator’s Manual: LEADER HC+ System	 	[...***... ]	 	[...***... ]
	 
	 	901292	 	TMA Data Reduction Software, IVD	 	[...***... ]	 	[...***... ]
	 
	 	105001-01	 	TMA Worklist Editor, IVD	 	[...***... ]	 	[...***... ]
	 
	 	901291	 	HCV QL (Protocols-Bayer), IVD	 	[...***... ]	 	[...***... ]
	 
	 	102113	 	Eppendorf Repeat Pipettor	 	[...***... ]	 	[...***... ]
	 
	 	102160	 	Vortexer	 	[...***... ]	 	[...***... ]
	 
	 	901391	 	LHC Computer Control Unit	 	[...***... ]	 	[...***... ]
	 
	 	104579	 	TCS Ten Tube Unit (TTU) Rack	 	[...***... ]	 	[...***... ]
	 
	 	104586	 	TCS Water Baths	 	[...***... ]	 	[...***... ]
	 
	 	104591	 	Printer	 	[...***... ]	 	[...***... ]
	 
	 	104592	 	Printer Cable	 	[...***... ]	 	[...***... ]
	 
	 	104624	 	LHC UPS/Power Conditioner	 	[...***... ]	 	[...***... ]






***Confidential Treatment Requested








-4-









 








	 	 	 	 	 	 	 	 	 
	 
	 	104627	 	Water Bath Spacer	 	[...***... ]	 	[...***... ]
	 
	 	104688	 	Vacuum Pump (High Flow - Rev. B)	 	[...***... ]	 	[...***... ]
	 
	 	301078-01	 	Syscheck- 15x3ml	 	[...***... ]	 	[...***... ]
	 
	 	102085	 	Sealing Cards	 	[...***... ]	 	[...***... ]
	 
	 	TU0040	 	Ten Tube Unit (TTUS)	 	[...***... ]	 	[...***... ]
	 
	 	104578	 	Ten Tip Cassettes (TTC)	 	[...***... ]	 	[...***... ]
	 
	 	105107	 	Bar Code Scanner (trigger)	 	[...***... ]	 	[...***... ]






***Confidential Treatment Requested





-5-