Exhibit 10.28


 


PATENT LICENSE AND SETTLEMENT AGREEMENT


 


THIS PATENT LICENSE AND SETTLEMENT AGREEMENT (this “Agreement”) dated
as of July 25, 2006 (the “Effective Date”), is entered into between
BIOSITE INCORPORATED, a Delaware corporation (“Biosite”), having a place of
business at 9975 Summers Ridge Road, San Diego, California 92121, and ROCHE
DIAGNOSTICS CORPORATION, an Indiana corporation, having a place of business at
9115 Hague Road, PO Box 50457, Indianapolis, Indiana 46256, ROCHE DIAGNOSTICS
OPERATIONS, INC., a Delaware corporation with its principal place of
business in Indianapolis, Indiana, ROCHE DIAGNOSTICS GMBH, a German corporation
with its principal place of business in Mannheim, Germany, and CORANGE
INTERNATIONAL, LTD., a Bermuda corporation with a branch in Puerto Rico,
(collectively “Roche”).


 


W I T N E S S E T H :


 


WHEREAS, Biosite or its Affiliates own the Biosite Patent Rights (as
defined below).


 


WHEREAS, Roche or its Affiliates own the Roche Patent Rights (as
defined below).


 


WHEREAS, each party desires to grant to the other party a fully-paid
up, nonexclusive license under such patent rights on the terms and conditions
set forth in this Agreement.


 


NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants herein contained, the parties hereby agree as follows:


 


1.                                       DEFINITIONS


 


For purposes of this Agreement, the terms defined in this Section 1
shall have the respective meanings set forth below:


 


1.1                                 “Affiliate”
shall mean any corporation or other entity that is directly or indirectly
controlling, controlled by or under common control with a party. For the
purpose of this definition, “control” shall mean the direct or indirect
ownership of at least fifty percent (50%) of the shares of the subject
entity entitled to vote in the election of directors (or, in the case of an
entity that is not a corporation, for the election of the corresponding
managing authority), or at least a fifty percent (50%) interest in the
income of such entity; provided that, if local law requires a minimum
percentage of local ownership, control shall be established by direct or
indirect ownership of one hundred percent (100%) of the maximum ownership
percentage that may, under such local law, be owned by foreign interests. For
the purpose of this Agreement, Genentech, Inc., 1 DNA Way, South San
Francisco, California 94080-4990, USA (“Genentech”) and Chugai Pharmaceutical
Co., Ltd., 1–1 Nihonbashi-Muromachi 2-Chome, Chuo-ku, Tokyo 103-8324, Japan (“Chugai”),
respectively, shall not be deemed an Affiliate of Roche, unless Roche opts for
the inclusion of Genentech and/or Chugai, by giving written notice to Biosite.


 


1.2                                 “Biosite
Patent Rights” shall mean (a) those certain patents listed on Exhibit A
hereto; (b) all U.S. and foreign patents that have issued or in the future
issue from any patent


 


1

















 


applications claiming common priority to the patent applications from
which the patents of Exhibit A issued, including utility, model and design
patents and certificates of invention; and (c) all reissues,
reexaminations, renewals, extensions or additions to any patents identified in
subpart (a) or (b) of this Section 1.2.


 


1.3                                 “Biosite
Product” shall mean any product that if made, used, sold, offered for sale or
imported absent the licenses granted hereunder would infringe one or more Valid
Claims of the Roche Patent Rights.


 


1.4                                 “Patent
Rights” shall mean the Biosite Patent Rights and Roche Patent Rights.


 


1.5                                 “Pending
Litigation” shall mean (a) Civil Action No. 1:04-CV-01848-LJM-VSS
in the United States District Court for the Southern District of Indiana, and (b) Civil
Action No. 04 CV 2381-B(LSP) in the United States District Court for the
Southern District of California.


 


1.6                                 “Product(s)”
shall mean Biosite Product and Roche Product, as applicable.


 


1.7                                 “Roche
Patent Rights” shall mean (a) those certain patents listed on Exhibit B
hereto; (b) all U.S. and foreign patents that have issued or in the future
issue from any patent applications claiming common priority to the patent
applications from which the patents of Exhibit B issued, including
utility, model and design patents and certificates of invention; and (c) all
reissues, reexaminations, renewals, extensions or additions to any patents
identified in subpart (a) or (b) of this Section 1.7.


 


1.8                                 “Roche
Product” shall mean any product that if made, used, sold, offered for sale
or imported absent the licenses granted hereunder would infringe one or more
Valid Claims of the Biosite Patent Rights.


 


1.9                                 “Valid
Claim” shall mean a claim of an issued and unexpired patent included within
the applicable Patent Rights, that either (1) has not been held
permanently revoked, unenforceable or invalid by a decision of a court or other
governmental agency of competent jurisdiction, which decision is no longer
subject to appeal or other review, or (2) has not been admitted to be
invalid or unenforceable through reissue or disclaimer or otherwise.


 


2.                                       REPRESENTATIONS
AND WARRANTIES


 


2.1                                 Mutual
Representations. Each party hereby represents and warrants to the other
party as follows:


 


(a)                                  Corporate
Existence. Such party is a corporation duly organized, validly existing and
in good standing under the laws of the state or country in which it is
incorporated.


 


(b)                                 Authorization
and Enforcement of Obligations. Such party (a) has the corporate power
and authority and the legal right to enter into this Agreement and to perform its
obligations hereunder, and (b) has taken all necessary corporate action on
its part to authorize the execution and delivery of this Agreement and the
performance of its obligations hereunder. This Agreement has been duly executed
and delivered on behalf of such party, and constitutes a legal, valid, binding
obligation, enforceable against such party in accordance with its terms.


 


2

















 


(c)                                  No
Consents. All necessary consents, approvals and authorizations of all
governmental authorities and other persons required to be obtained by such
party in connection with this Agreement have been obtained.


 


(d)                                 No
Conflict. The execution and delivery of this Agreement and the performance
of such party’s obligations hereunder (a) do not conflict with or violate
any requirement of applicable laws or regulations, and (b) do not conflict
with, or constitute a default under, any contractual obligation of it.


 


2.2                                 Patent
Rights. Biosite represents and warrants that it or its Affiliates are the
sole owners of all right, title and interest in and to the Biosite Patent
Rights and have the right to grant the license to Roche as set forth in this
Agreement. Roche represents and warrants that it or its Affiliates are the sole
owners of all right, title and interest in and to the Roche Patent Rights and
have the right to grant the license to Biosite as set forth in this Agreement. EXCEPT
AS EXPRESSLY SET FORTH IN THIS SECTION 2, NEITHER PARTY MAKES ANY OTHER
REPRESENTATIONS OR WARRANTIES, WHETHER EXPRESS OR IMPLIED, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, TITLE OR NON-INFRINGEMENT, AND ANY WARRANTIES THAT MAY ARISE FROM
COURSE OF PERFORMANCE, COURSE OF DEALING OR USAGE OF TRADE.


 


3.                                       LICENSE
GRANT


 


3.1                                 License
Grants.


 


(a)                                  Subject
to the terms and conditions of this Agreement (including the provisions of Section 3.3
below), Biosite, on behalf of itself and its Affiliates, hereby grants to Roche
a worldwide, irrevocable (except as provided in Section 8.2 below),
perpetual, royalty-free, fully-paid up, non-exclusive right and license (without
the right to grant sublicenses except to Affiliates as set forth in Section 3.2
below) under the Biosite Patent Rights to make, have made, use, offer for sale,
sell and import Roche Products, and to practice any method, process or
procedure in connection therewith.


 


(b)                                 Subject
to the terms and conditions of this Agreement (including the provisions of Section 3.3
below), Roche, on behalf of itself and its Affiliates, hereby grants to Biosite
a worldwide, irrevocable (except as provided in Section 8.3 below),
perpetual, royalty-free, fully-paid up, non-exclusive right and license
(without the right to grant sublicenses except to Affiliates as set forth in Section 3.2
below) under the Roche Patent Rights to make, have made, use, offer for sale,
sell and import Biosite Products, and to practice any method, process or
procedure in connection therewith.


 


(c)                                  The
licenses granted herein shall include the right to utilize a third party to
develop, test, manufacture and import (but not offer for sale or sell) such
party’s Product.


 


3.2                                 Rights
of Affiliates. Each party shall have the right to sublicense the right and
license granted to such party under Section 3.1 to one or more of its
Affiliates, provided that all such Affiliates agree in writing to be bound by
this Agreement to the same extent as such party.


 


3

















 


3.3                                 Effective
Date of Licenses. With respect to the licenses granted to Biosite under Section 3.1(b) above,
said license shall become effective only upon Biosite meeting its obligations
under Sections 4.1, 5.4 and 5.6 below. With respect to the licenses granted to
Roche under Section 3.1(a) above, said license shall become effective
only upon all Roche entities that are a party to this Agreement meeting their
respective obligations under Sections 5.4 and 5.6 below.


 


4.                                       PAYMENT
TO ROCHE


 


4.1                                 Payment.
Within 90 days of the Effective Date of this Agreement, Biosite shall pay to
Roche Diagnostics Operations, Inc. eight million five hundred thousand
U.S. Dollars ($8,500,000). Payment shall be made by wire transfer.


 


5.                                       RELEASES
AND SETTLEMENT


 


5.1                                 Release.
Each party, on behalf of itself and its Affiliates, agents, representatives,
directors, employees, attorneys, advisors, insurers, successors and permitted
assigns (collectively, the “Related Parties”), hereby irrevocably (except as
provided in Section 8 below) 
covenants not to sue, releases and discharges the other party and its
Related Parties of and from any and all claims, counterclaims, demands,
actions, causes of action, damages, liabilities, losses, payments, obligations,
costs and expenses (including, without limitation, attorneys’ fees and costs)
(collectively, the “Claims”) of any kind or nature, past, present or future,
fixed or contingent, direct or indirect, in law or equity, several or
otherwise, known or unknown, suspected or unsuspected, that arise from or
relate in any way to any act, fact, transaction, cause, matter, condition,
occurrence or event whatsoever prior to the effective date of this release with
respect to Claims regarding infringement or suspected infringement of such
party’s Patent Rights. The foregoing release is expressly intended to cover and
include, without limitation, all claims, past, present or future, known or
unknown, suspected or unsuspected, which can or may ever be asserted by
successors or otherwise, as the result of the matters herein released, or the
effects or consequences thereof, subject to the termination rights in Section 8
below. Each party hereby represents that it has the power to bind its
respective Related Parties to the terms and conditions set forth in this
Agreement as if such Related Parties were an original signatory to this
Agreement. The foregoing release shall not apply to a party’s obligations
required to be performed under this Agreement. This release shall become
effective with respect to Biosite and each of its Related Parties only upon
Biosite meeting its obligations under Sections 4.1, 5.4 and 5.6 below. This
release shall become effective with respect to each Roche entity that is a
party to this Agreement, and each of their respective Related Parties, only
upon all Roche entities that are a party to this Agreement meeting their
respective obligations under Sections 5.4 and 5.6 below.


 


5.2                                 Indemnity.
Each party shall indemnify, hold harmless and defend the other party and the
other party’s Related Parties from and against any and all third party claims,
demands, actions or proceedings, or threat thereof, and all losses,
liabilities, damages, costs, expenses, judgments, awards and settlements
relating thereto (including without limitation reasonable attorneys’ fees and
costs) to the extent arising from or relating to (a) any Claim released by
such party under Section 5.1 above, or (b) a breach of any representation,
warranty or covenant by such party set forth in this Agreement.


 


4

















 


5.3                                 Waiver.
Each party, on behalf of itself and its Related Parties, hereby irrevocably and
forever waives all rights such party may have arising under California
Civil Code Section 1542 (or any analogous requirement of law) with respect
to the foregoing release. Each party understands that Section 1542
provides that:


 


A general release does not extend to claims which the creditor does not
know or suspect to exist in his favor at the time of executing the release,
which if known by him must have materially affected his settlement with the
debtor.


 


Each party acknowledges that it has been fully informed by its counsel
concerning the effect and import of this Agreement under California Civil Code Section 1542
and other requirements of law and fully understands its terms and their effect
and that this is a full and final compromise, release and settlement of all
Claims as described in Section 5.1.


 


5.4                                 European
Oppositions. Within ten (10) days after the Effective Date of this
Agreement, (a) Biosite shall file appropriate papers with the European
Patent Office to withdraw its opposition to Roche’s European Patent No. 0
746 762, patent application No. 94920002.6, and (b) Roche shall file
appropriate papers with the European Patent Office to withdraw its opposition
to Biosite’s European Patent No. 0 821 794, patent application No. 96913812.2.


 


5.5                                 Future
Opposition. Biosite agrees that it shall not file any opposition to any
European patent claiming common priority with Roche’s European Patent No. 0
746 762. Roche agrees that it shall not file any opposition to any European
patent claiming priority with Biosite’s European Patent No. 0 821 794


 


5.6                                 Dismissal
of Pending Litigation. Within five (5) days after the Effective Date
of this Agreement, the parties shall cause to be completed, executed and filed
with both the United States District Court for the Southern District of Indiana
and the United States District Court for the Southern District of California a
stipulated dismissal with prejudice of the Pending Litigation consistent with
this Agreement and in the form attached hereto as Exhibits C and D, as
appropriate. The parties shall cooperate and take such further actions as
necessary to effectuate the dismissal of such action(s) on the terms hereof.


 


5.7                                 No
Admission. This Agreement may be pleaded as a full and complete
defense to any Claim released under Section 5.1 above, and may be used
as the basis for an injunction against any such Claim which may be
prosecuted, initiated or attempted in violation of the terms hereof. The
parties acknowledge that this Agreement and the releases contained herein are
entered into in order to compromise and settle disputed claims, and to avoid
the expense of protracted litigation, without any concession or admission of
validity or invalidity or enforceability or nonenforceability of the Patent
Rights by any party, and without any acquiescence on the part of either
party as to the merit of any claim, defense, affirmative defense, counterclaim,
liabilities or damages related to the Patent Rights and/or the Pending
Litigation. Neither this Agreement nor any part thereof shall be, or be
used as, an admission of infringement or liability by anyone, at any time for
any purpose.


 


5.8                                 Attorneys
Fees and Costs. Each party shall be responsible for its own attorneys’ fees
and costs, if any, in connection with this Agreement and the Pending
Litigation.


 


5

















 


6.                                       CONFIDENTIALITY


 


Roche and Biosite shall not disclose any terms or conditions of this
Agreement to any third party without the prior consent of the other party. Notwithstanding
the foregoing, Biosite is authorized to fulfill its reporting obligations as a
listed company, provided, that Biosite shall (i) seek, to the extent
permitted by law, confidential treatment for the terms hereof, and (ii) give
Roche the greatest practical prior written notice so as to permit Roche to take
all possible action to protect and/or safeguard its rights in the confidential
information. Furthermore, and notwithstanding the foregoing, Roche and Biosite
shall have the right to disclose the terms and conditions of this Agreement to
the extent that such disclosure is reasonably necessary in the following
instances:


 


(a)                                  informing
the public of the grant of license, and patents licensed, in this Agreement;


 


(b)                                 complying
with an applicable law, regulation of a governmental agency or order of a court
of competent jurisdiction, or responding to a subpoena or other lawful court
process, including disclosure of an unredacted copy of this Agreement in its
entirety; and


 


(c)                                  disclosure
to investment bankers, investors, potential investors, auditors and potential
business partners, each of whom prior to disclosure must be bound by similar
obligations of confidentiality at least equivalent in scope to those set forth
in this Section 6; provided in each case that the disclosing party shall
provide written notice thereof to the other party and reasonable opportunity to
object to such disclosure or to request confidential treatment thereof, if
available.


 


7.                                       PATENTS.


 


7.1                                 Control.
Nothing in this Agreement shall grant to a party any right to control the preparation,
filing, prosecution, maintenance or enforcement of the Patent Rights of the
other party.


 


8.                                       TERMINATION


 


8.1                                 Expiration.
This Agreement shall expire on the expiration of the last to expire patent
included within the Patent Rights.


 


8.2                                 Termination
by Biosite. Biosite shall have the right, upon written notice to Roche, to
terminate Section 3.1(a) and the releases granted to Roche and its
Related Parties pursuant to Section 5.1 above if Roche (a) directly
or indirectly (whether alone, or in concert with or for the benefit of any
third party) challenges, opposes, seeks to invalidate or render void or
unenforceable all or a portion of the Biosite Patent Rights (or purports to do
any of the foregoing), through a declaratory judgment, provoking or supporting
an interference action, or any other action or proceeding, or otherwise lends
assistance to a third party to do any of the foregoing, except to the extent
required by applicable law, regulation, court order or bona fide judicial
process; or (b) attempts to enforce the Roche Patent Rights against
Biosite or any of its Affiliates. If Biosite terminates Sections 3.1(a) or
5.1 pursuant to this Section 8.2, the remainder of this Agreement shall
remain in full force and effect in accordance with its terms.


 


6

















 


8.3                                 Termination
by Roche. Roche shall have the right, upon written notice to Biosite, to
terminate Section 3.1(b) and the releases granted to Biosite and its
Related Parties pursuant to Section 5.1 above if Biosite (a) directly
or indirectly (whether alone, or in concert with or for the benefit of any
third party) challenges, opposes, seeks to invalidate or render void or
unenforceable all or a portion of the Roche Patent Rights (or purports to do
any of the foregoing), through a declaratory judgment, provoking or supporting
an interference action, or any other action or proceeding, or otherwise lends
assistance to a third party to do any of the foregoing, except to the extent
required by applicable law, regulation, court order or bona fide judicial
process, or (b) attempts to enforce the Biosite Patent Rights against any
Roche entity that is party to this Agreement or any of their respective
Affiliates. If Roche terminates Sections 3.1(b) or 5.1 pursuant to this
Section 8.3, the remainder of this Agreement shall remain in full force
and effect in accordance with its terms.


 


9.                                       LIMITATION
OF LIABILITY


 


TO THE EXTENT ALLOWED BY APPLICABLE LAW AND NOTWITHSTANDING THE FAILURE
OF ESSENTIAL PURPOSE OF ANY LIMITATION OF LIABILITY OR LIMITED REMEDY NEITHER
PARTY SHALL UNDER ANY CIRCUMSTANCES HAVE ANY LIABILITY WHATSOEVER FOR ANY
INCIDENTAL, INDIRECT, CONSEQUENTIAL, PUNITIVE OR SPECIAL DAMAGES OF ANY KIND,
OR ANY DAMAGES FOR LOST REVENUES, PROFITS, BUSINESS OR DATA, ARISING OUT OF OR
RELATING TO THIS AGREEMENT, EVEN IF SUCH PARTY IS INFORMED IN ADVANCE OF THE
POSSIBILITY OF SUCH DAMAGES.


 


10.                                 MISCELLANEOUS


 


10.1                           Specific
Performance. Each party hereby acknowledges and agrees that in the event of
any breach of this Agreement, the parties that are not in breach will suffer
irreparable injury, such that no remedy at law will afford it adequate
protection against, or appropriate compensation for, such injury. Accordingly,
each party hereby agrees that the parties not in breach shall be entitled to
specific performance of the breaching party’s obligations under this Agreement,
as well as such further injunctive relief as may be granted by a court of
competent jurisdiction. This Section 10.1 shall not be interpreted to
preclude the availability of other forms of remedies for breach of this
Agreement, including, without limitation, monetary damages.


 


10.2                           Notices.
Any consent, notice or report required or permitted to be given or made under
this Agreement by one of the parties hereto to the other party shall be in
writing, delivered by any lawful means to such other party at its address
indicated below, or to such other address as the addressee shall have last
furnished in writing to the addressor and (except as otherwise provided in this
Agreement) shall be effective upon receipt by the addressee.


 


	
  If to
  Biosite:

  	
  Biosite
  Incorporated

  
	
   

  	
  9975 Summers
  Ridge Road

  
	
   

  	
  San Diego,
  California 92121

  
	
   

  	
  Attention:
  President

  
	
   

  	
  With a copy
  to: Legal Dept.

  



 


7

















 


	
  with a copy
  to:

  	
  Williams &
  Connolly, LLP

  
	
   

  	
  725 Twelfth
  St., N.W.

  
	
   

  	
  Washington,
  DC 20005

  
	
   

  	
  Attention:
  Bruce Genderson

  
	
   

  	
   

  
	
  If to Roche:

  	
  Roche
  Diagnostics Operations, Inc.

  
	
   

  	
  9115 Hague
  Road

  
	
   

  	
  PO Box 50457

  
	
   

  	
  Indianapolis,
  Indiana 46256

  
	
   

  	
  Attention:
  D. Michael Young

  
	
   

  	
   

  
	
  with a copy
  to:

  	
  Barnes &
  Thornburg LLP

  
	
   

  	
  11 South
  Meridian Street

  
	
   

  	
  Indianapolis,
  Indiana 46204

  
	
   

  	
  Attention:
  Paul B. Hunt

  



 


10.3                           Assignment.
Neither party shall assign its rights or obligations under this Agreement
without the prior written consent of the other party; provided, however, that
either party may, without such consent, assign this Agreement and its rights
and obligations hereunder in connection with the transfer or sale of all or
substantially all of its business, or in the event of its merger,
consolidation, change in control or similar transaction. Any permitted assignee
shall assume all obligations of its assignor under this Agreement.


 


10.4                           Applicable
Law. This Agreement shall be governed by and construed in accordance with
the laws of the State of Indiana, without regard to the conflicts of law
principles thereof.


 


10.5                           Further
Assurances. Each party agrees to take or cause to be taken such further
actions, and to execute, deliver and file or cause to be executed, delivered
and filed such further documents and instruments, and to obtain such consents,
as may be reasonably required or requested in order to effectuate fully
the purposes, terms and conditions of this Agreement.


 


10.6                           Waivers
and Amendments. No change, modification, extension, termination or waiver
of this Agreement, or any of the provisions herein contained, shall be valid
unless made in writing and signed by duly authorized representatives of the
parties hereto.


 


10.7                           Entire
Agreement. This Agreement embodies the entire agreement between the parties
and supersedes any prior representations, understandings and agreements between
the parties regarding the subject matter hereof. There are no representations,
understandings or agreements, oral or written, between the parties regarding
the subject matter hereof that are not fully expressed herein.


 


10.8                           Construction
of this Agreement. The parties hereto have cooperated in the drafting and
preparation of this Agreement. Therefore, none of the parties shall be deemed
the drafter of this Agreement for the purpose of interpreting or construing any
of the provisions hereof.


 


10.9                           Severability.
Any of the provisions of this Agreement which are determined to be invalid or
unenforceable in any jurisdiction shall be ineffective to the extent of such
invalidity or


 


8

















 


unenforceability in such jurisdiction, without rendering invalid or
unenforceable the remaining provisions hereof and without affecting the
validity or enforceability of any of the terms of this Agreement in any other
jurisdiction.


 


10.10                     Waiver.
The waiver by either party hereto of any right hereunder or the failure to perform or
of 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.


 


10.11                     Counterparts.
This Agreement may be executed in two or more counterparts, each of which
shall be deemed an original, but all of which together shall constitute one and
the same instrument.


 


9

















 


IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.


 


	
  BIOSITE
  INCORPORATED

  	
  ROCHE
  DIAGNOSTICS CORPORATION

  
	
   

  	
   

  
	
   

  	
   

  
	
  By 

  	
  /s/ Kim D.
  Blickenstaff 

  	
   

  	
  By 

  	
  (Illegible)

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title

  	
  Chairman and
  CEO

  	
   

  	
  Title

  	
  Vice
  President

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
  ROCHE
  DIAGNOSTICS OPERATIONS,

  INC. 

  	
  CORANGE
  INTERNATIONAL, LTD. 

  
	
   

  	
  By 

  	
  /s/ C.
  George Burch

  	
   

  
	
  By 

  	
  /s/D.
  Michael Young 

  	
   

  	
   

  
	
   

  	
  Title

  	
  Director

  	
   

  
	
  Title

  	
  Assistant
  Secretary

  	
   

  	
   

  
	
   

  	
  By 

  	
  /s/ John
  S.T. Stout

  	
   

  
	
   

  	
   

  
	
   

  	
  Title

  	
  Director

  	
   

  
	
  ROCHE
  DIAGNOSTICS GMBH

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
  By 

  	
  (Illegible)

  	
   

  	
   

  
	
   

  	
   

  
	
  Title

  	
  Head Legal
  Business

  	
   

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
  By 

  	
  (Illegible)

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  Title

  	
  Director &
  Senior Patent Attorney

  	
   

  	
   

  
																		



 


10

















 


EXHIBIT A


 


 


Biosite Patent Rights


 


 


U.S. Patent No. 5,795,725


 


U.S. Patent No. 6,174,686


 


U.S. Patent No. 6,939,678


 


11

















 


EXHIBIT B


 


 


Roche Patent Rights


 


 


U.S. Patent No. 4,816,224


 


U.S. Patent No. 5,366,609


 


12

















 


EXHIBIT C


 


 


Biosite Dismissal


 


 


[SEE ATTACHED]


 


13

















 


UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF CALIFORNIA


 


	
  BIOSITE
  INCORPORATED, a Delaware

  corporation, 

  	
   

  	
  Case No. 04
  CV 2381-B(LSP)

  
	
   

  	
   

  	
   

  
	
   

  	
  Plaintiff, 

  	
   

  	
  [PROPOSED] ORDER

  
	
   

  	
   

  	
   

  
	
   

  	
  v.

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  ROCHE
  DIAGNOSTICS CORPORATION,

  an Indiana Corporation; and ROCHE

  DIAGNOSTICS GMBH, a German

  corporation, 

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Defendants.

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  ROCHE
  DIAGNOSTICS CORPORATION,

  an Indiana Corporation; and ROCHE

  DIAGNOSTICS GMBH, a German

  corporation, 

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Counterclaim Plaintiffs,

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  v.

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  BIOSITE
  INCORPORATED, a Delaware

  corporation, 

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Counterclaim Defendant.

  	
   

  	
   

  	
   

  
							



 


 


Pursuant to the joint Stipulation of Dismissal with Prejudice as
executed by all parties to this case and filed with this Court, it is therefore


 


CASE NO. 04 04 CV 2381-B(LSP)


 


14

















 


ORDERED that all claims and counterclaims in the above-captioned case
are dismissed with prejudice, the parties to bear their own attorneys’ fees and
costs.


 


 


So Ordered, this
                  day
of
                       ,
2006.


 


 


Judge, United States District Court for the Southern District of
California


 


15

















 


IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA


 


	
  BIOSITE
  INCORPORATED, a Delaware

  corporation, 

  	
   

  	
  Case No. 04
  CV 2381-B(LSP)

  
	
   

  	
   

  	
   

  
	
   

  	
  Plaintiff, 

  	
   

  	
  STIPULATION OF DISMISSAL 

  
	
   

  	
   

  	
  WITH PREJUDICE

  
	
   

  	
  v.

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  ROCHE
  DIAGNOSTICS CORPORATION,

  an Indiana Corporation; and ROCHE

  DIAGNOSTICS GMBH, a German

  corporation, 

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Defendants.

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  ROCHE
  DIAGNOSTICS CORPORATION,

  an Indiana Corporation; and ROCHE

  DIAGNOSTICS GMBH, a German

  corporation, 

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Counterclaim Plaintiffs,

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  v.

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  BIOSITE
  INCORPORATED, a Delaware

  corporation, 

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Counterclaim Defendant.

  	
   

  	
   

  	
   

  
							



 


 


Pursuant to Fed. R. Civ. P. 41, Plaintiff Biosite Incorporated (“Biosite”),
and Defendants, Roche Diagnostics Corporation and Roche Diagnostics GmbH (“Roche”),
by and through their attorneys, stipulate and agree that all claims filed by
Biosite against Roche in the above-captioned case, and all counterclaims filed
by Roche against Biosite in the above-captioned case, are hereby dismissed with
prejudice. The parties will bear their own costs and attorneys’ fees.


 


16

















 


	
  Respectfully
  Submitted,

  	
   

  
	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  
	
  Kent M.
  Walker (173700)

  	
  Jeffrey D.
  Lewin

  
	
  COOLEY
  GODWARD LLP

  	
  SULLIVAN,
  HILL, LEWIN, REZ &

  
	
  4401
  Eastgate Mall

  	
  ENGEL

  
	
  San Diego,
  CA 92121

  	
  550 West C
  Street

  
	
   

  	
  Suite 1500

  
	
  Bruce R.
  Genderson

  	
  San Diego,
  CA 92101

  
	
  Thomas H. L.
  Selby

  	
   

  
	
  Aaron P.
  Maurer

  	
  Daniel
  Albers

  
	
  Rebecca S.
  LeGrand

  	
  Mark
  Hagedorn

  
	
  WILLIAMS &
  CONNOLLY LLP

  	
  Sendil
  Devadas

  
	
  725 12TH St.
  NW

  	
  BARNES &
  THORNBURG LLP

  
	
  Washington,
  DC 20005

  	
  One North
  Wacker Drive

  
	
   

  	
  Suite 4400

  
	
  Attorneys for Plaintiff

  	
  Chicago,
  Illinois 60606

  
	
   

  	
   

  
	
   

  	
  Attorneys for Defendants

  
				



 


17

















 


EXHIBIT D


 


 


Roche Dismissal of Litigation


 


[SEE ATTACHED]


 


18

















 


IN THE UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF INDIANA


INDIANAPOLIS DIVISION


 


 


	
   

  	
  )

  	
   

  
	
  ROCHE
  DIAGNOSTICS CORPORATION, ROCHE 

  	
  )

  	
   

  
	
  DIAGNOSTICS
  OPERATIONS, INC., ROCHE 

  	
  )

  	
   

  
	
  DIAGNOSTICS
  GMBH,

  	
  )

  	
   

  
	
  and CORANGE
  INTERNATIONAL, LTD.,

  	
  )

  	
  CIVIL ACTION
  NO.

  
	
   

  	
  )

  	
  1:04-CV-01848-LJM-VSS

  
	
   

  	
  Plaintiff, 

  	
  )

  	
   

  
	
   

  	
  v.

  	
  )

  	
   

  
	
   

  	
  )

  	
   

  
	
  BIOSITE
  INCORPORATED,

  	
  )

  	
   

  
	
   

  	
  )

  	
   

  
	
   

  	
  Defendant.

  	
  )

  	
   

  
						



 


STIPULATION OF DISMISSAL WITH PREJUDICE


 


Pursuant to Fed. R. Civ. P. 41, Plaintiffs Roche Diagnostics
Corporation, Roche Diagnostics Operations, Inc., Roche Diagnostics GmbH,
and Corange International, Ltd. (“Roche”), and Defendant Biosite Incorporated (“Biosite”),
by and through undersigned counsel, stipulate and agree that all claims filed
by Roche against Biosite in the above-captioned case, and all counterclaims
filed by Biosite against Roche in the above-captioned case, are hereby
dismissed with prejudice. The parties will bear their own costs and attorneys’
fees.


 


A proposed form of order is submitted herewith.


 


19

















 


Dated:  July          ,
2006


 


Respectfully
Submitted,


 


	
  By 

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Stephen E.
  Arthur

  	
   

  	
  Donald E.
  Knebel

  
	
  Raymond A.
  Basile

  	
   

  	
  Larry A.
  Mackey

  
	
  HARRISON &
  MOBERLY, LLP

  	
   

  	
  Paul B. Hunt

  
	
  135 North
  Pennsylvania Street

  	
   

  	
  Helen K.
  Geib

  
	
  Suite 210

  	
   

  	
  BARNES &
  THORNBURG LLP

  
	
  Indianapolis,
  IN 56204

  	
   

  	
  11 South
  Meridian St.

  
	
   

  	
   

  	
  Indianapolis,
  IN 46204

  
	
  Bruce R.
  Genderson

  	
   

  	
   

  
	
  Thomas H. L.
  Selby

  	
   

  	
  Brent A.
  Harris

  
	
  Aaron P.
  Maurer

  	
   

  	
  ROCHE
  DIAGNOSTICS

  
	
  Rebecca S.
  LeGrand

  	
   

  	
  OPERATIONS, INC.

  
	
  WILLIAMS &
  CONNOLLY LLP

  	
   

  	
  9115 Hague
  Road

  
	
  725 12TH St. NW

  	
   

  	
  Indianapolis,
  IN 46250

  
	
  Washington,
  DC 20005

  	
   

  	
   

  
	
   

  	
   

  	
  Attorneys
  for Roche Diagnostics Corporation,

  
	
  Attorneys
  for Defendant

  	
   

  	
  Roche
  Diagnostics Operations, Inc., Roche

  
	
  Biosite
  Incorporated

  	
   

  	
  Diagnostics
  GmbH, and Corange International,

  
	
   

  	
   

  	
  Ltd.

  



 


20

















 


UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF INDIANA


INDIANAPOLIS DIVISION


 


 


	
   

  	
  )

  	
   

  
	
  ROCHE
  DIAGNOSTICS CORPORATION, ROCHE 

  	
  )

  	
   

  
	
  DIAGNOSTICS
  OPERATIONS, INC., ROCHE 

  	
  )

  	
   

  
	
  DIAGNOSTICS
  GMBH,

  	
  )

  	
   

  
	
  and CORANGE
  INTERNATIONAL, LTD.,

  	
  )

  	
  CIVIL ACTION
  NO.

  
	
   

  	
  )

  	
  1:04-CV-01848-LJM-VSS

  
	
   

  	
  Plaintiff, 

  	
  )

  	
   

  
	
   

  	
  v.

  	
  )

  	
   

  
	
   

  	
  )

  	
   

  
	
  BIOSITE
  INCORPORATED,

  	
  )

  	
   

  
	
   

  	
  )

  	
   

  
	
   

  	
  Defendant.

  	
  )

  	
   

  
	
   

  	
   

  	
   

  
						



 


[PROPOSED] ORDER


 


Pursuant to the joint Stipulation of Dismissal with Prejudice as
executed by all parties to this case and filed with this Court, it is therefore


 


ORDERED that all claims and counterclaims in the above-captioned case
are dismissed with prejudice, the parties to bear their own attorneys’ fees and
costs.


 


 


	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date

  	
   

  	
  United
  States District Judge

  



 


21