Collaborative research agreement btwn Xenogen and Pfizer




 Exhibit 10.20 
  
 [CONFIDENTIAL TREATMENT GRANTED. CERTAIN PORTIONS OF THIS AGREEMENT HAVE BEEN REDACTED AND SEPARATELY FILED WITH THE
COMMISSION.] 
  
 COLLABORATIVE RESEARCH AGREEMENT

  
 This COLLABORATIVE RESEARCH AGREEMENT
(“Agreement”) is entered into as of December 28, 2000 by and between PFIZER INC, a Delaware corporation, having an office at 235 East 42nd Street, New York, New York 10017 and its Affiliates (“Pfizer”), and XENOGEN
BIOSCIENCES (“Xenogen Cranbury”), an Ohio Corporation, with an office at 5 Cedar Brook Drive, Cranbury, NJ 08512, and a wholly owned subsidiary of Xenogen Corp. (“Xenogen”). 
  
 RECITALS 
  
 WHEREAS, Pfizer wishes to develop Assays (as defined below) to use in
performing phenotypic analysis of Transgenic Animals (as defined below) with a view toward identifying the role of interesting genes in human disease processes and toward validating gene function in research animals; and 
  
 WHEREAS, Pfizer has detailed protocols for individual Assays;

  
 WHEREAS, Xenogen Cranbury has expertise
in developing and conducting such Assays and in performing phenotypic analysis of Transgenic Animals using such Assays; and 
  
 WHEREAS, Xenogen Cranbury desires to collaborate with Pfizer on the development of such Assay packages for Transgenic Animals; 

 
 NOW, THEREFORE, in consideration of the promises and mutual
covenants contained herein, Xenogen Cranbury and Pfizer agree as follows: 
  
 1. DEFINITIONS. 
  
 Whenever used in this
Agreement, the terms defined in this Section 1 shall have the meanings specified. 
  
 1.1 “Affiliate” means, with respect to Pfizer, any legal entity controlling, controlled by, or under common control with Pfizer; and with respect to Xenogen Cranbury, any legal entity controlling,
controlled by, or under common control with Xenogen Cranbury; where, in all cases, “control” means the ownership, directly or indirectly, of fifty percent (50%) or more of the voting capital shares or similar voting securities of the other
entity. 
  

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 1.2 “Area” means: (a) research to develop a battery of phenotypic and challenge Assays
on Transgenic Animals; (b) performing phenotypic analysis on Transgenic Animals using such Assays; and (c) any other activities identified in the course of the research or development hereunder; in all cases only as specified in the Research Plan
(as defined below). 
  
 1.3 “Assay” means any of
the Level I Assays, the Level II Assays, the Level IIIP Assays, or the Level IIIXC Assays as defined below. 
  
 1.4 “Contract Period” means the period beginning on the Effective Date and ending on the date on which this Agreement terminates.

  
 1.5 “Contract Research Service” means a
research service performed for a Third Party (as defined below) for a fee or other consideration. 
  
 1.6 “Control Animal” means any mouse, other than a Transgenic Animal (as defined below), acquired by Xenogen Cranbury under this
Agreement, including, but not limited to: *** 
  
 1.7
“Effective Date” means December 28, 2000. 
  
 1.8
“Level I Assay “ means any assay identified as a Level I Assay in Exhibit B, as annexed hereto, or as the parties may from time to time identify as a Level I Assay in a written amendment to the Research Plan. 
  
 1.9 “ Level II Assay” means any assay identified as a Level
II Assay in Exhibit B, as annexed hereto, or as the parties may from time to time identify as a Level II Assay in a written amendment to the Research Plan. 
  
 1.10 “Level III Assay” means a Level IIIP Assay or a Level IIIXC Assay (which may be collectively referred to as Level III Assays).

  
 1.10.1 “Level IIIP Assay”
means any assay incorporating Pfizer Technology and Pfizer Confidential Information (both as defined below) identified as a Level IIIP Assay in Exhibit B, as annexed hereto, or as the parties may from time to time identify as a Level IIIP Assay in a
written amendment to the Research Plan. 
  
 1.10.2 “Level IIIXC Assay” means any assay incorporating Xenogen Cranbury Technology and Xenogen Cranbury Confidential Information (both as defined below) identified as a Level IIIXC Assay in Exhibit B, as annexed hereto,
or as the parties may from time to time identify as a Level IIIXC Assay in a written amendment to the Research Plan. The designation of the Level IIIXC Assay shall be at the sole discretion of Xenogen Cranbury and Level IIIXC Assay will not be part
of Program Technology. 
  

	***	CONFIDENTIAL TREATMENT GRANTED 

  

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 1.11 “Period of Exclusivity” means, with respect to any Level III Assay, the period
ending on the second anniversary of the termination or expiration of this Agreement. 
  
 1.12 “Pfizer Compound” means any Pfizer compound, any library of Pfizer compounds, and intermediates of any Pfizer compound, any impurities of any Pfizer compound, and any information regarding the
chemical or biochemical properties of any Pfizer compound that Pfizer delivers to Xenogen Cranbury under this Agreement. 
  
 1.13 “Pfizer Confidential Information” means (a) all Results (as defined in Section 1.19) and Program Technology, and (b) all other
information about any element of Pfizer Technology, including, without limitation, protocols, which Pfizer discloses to Xenogen Cranbury and designates as “Confidential,” where such disclosure is either in writing or within 30 days of such
disclosure Pfizer provides Xenogen Cranbury a memorandum identifying the disclosure and characterizing it as confidential. Notwithstanding the foregoing, “Pfizer Confidential Information” shall not include any information that (i) at the
time of disclosure to Xenogen Cranbury, is already known by Xenogen Cranbury other than by virtue of a prior confidential disclosure to Xenogen Cranbury by Pfizer; or (ii) is or becomes disclosed in published literature, or otherwise is or becomes
generally known to the public, in each case through no fault or omission of Xenogen Cranbury; or (iii) is obtained by Xenogen Cranbury from a third party free from any obligation of confidentiality to Pfizer. 
  
 1.14 “Pfizer Technology” means (a) Technology developed
prior to the Effective Date by employees of, or consultants to, Pfizer acting alone or jointly with third parties (but, in the case of consultants or third parties, only to the extent Pfizer has the right to grant rights to such Technology), and
including without limitation any Transgenic Animals; (b) Program Technology; or (c) Results. 
  
 1.15 “Program Technology” means Technology developed, in the course of performing the Research Program by employees of or consultants to Pfizer or Xenogen Cranbury solely or jointly with each other,
excluding Results and Level IIIXC Assays, but including, without limitation, Level I, Level II and Level IIIP Assays. 
  
 1.16 “Research Plan” means the written plan describing the research and development in the Area to be carried out during the Contract
Period by Pfizer and Xenogen Cranbury pursuant to this Agreement. The Research Plan is attached to and made a part of this Agreement as Exhibit A. The Research Plan may be amended from time to time by agreement of the parties. Any such amended
Research Plan shall be appended hereto as an Exhibit. 
  

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 1.17 “Research Program” is the collaborative research program in the Area conducted by
Pfizer and Xenogen Cranbury pursuant to the Research Plan. 
  
 1.18 “Results” means any data or information generated by either party in the course of performing the Research Program, including, without limitation, any data relating to the development and use of any Assay, and any data
or information resulting from the application of any Assay to any Transgenic Animal or Control Animal. 
  
 1.19 “Start-Up Costs” means costs incurred for the activities performed under Phase IA, IB and 2 of Track I and IA, IB and 2 of Track 2
as further described in Exhibit A 
  
 1.20
“Technology” means and includes all materials, technology, technical data and information, inventions, methods, know-how, expertise and trade secrets within the Area. 
  
 1.21 “Third Party” means any party other than Pfizer, Xenogen, or Xenogen Cranbury. 
  
 1.22 “Transgenic Animal” means any genetically modified
mouse supplied by Pfizer to Xenogen Cranbury under this Agreement. 
  
 1.23 “Xenogen Cranbury Technology” means Technology that is or was developed by employees of, or consultants to, Xenogen Cranbury alone or jointly with third parties prior to the Effective Date, but, in the case of
consultants or third parties, only to the extent Xenogen Cranbury has the right to grant rights to such Technology, and specifically excluding, in all cases: (i) any technology concerning or relating to in vivo imaging; and (ii)
light-producing cells, micro-organisms or animals; and (iii) other technologies intended for use with (i) or (ii). 
  
 1.24 “Xenogen Cranburv Confidential Information” means (a) all information about any element of Xenogen Cranbury Technology which Xenogen
Cranbury discloses to Pfizer and designates as “Confidential,” where such disclosure is either in writing or within 30 days of such disclosure Xenogen Cranbury provides Pfizer a memorandum identifying the disclosure and characterizing it
as confidential. Notwithstanding the foregoing, “Xenogen Cranbury Confidential Information” shall not include any information that (i) at the time of disclosure to Pfizer, is already known by Pfizer other than by virtue of a prior
confidential disclosure to Pfizer by Xenogen Cranbury; or (ii) is or becomes disclosed in published literature, or otherwise is or becomes generally known to the public, in each case through no fault or omission of Pfizer; or (iii) is obtained by
Pfizer from a third party free from any obligation of confidentiality to Xenogen Cranbury. 
  

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 2. COLLABORATIVE RESEARCH PROGRAM 
  
 2.1 Purpose. Xenogen Cranbury and Pfizer each shall conduct their respective responsibilities of the Research Program
throughout the Contract Period. The objective of the Research Program is to develop specific phenotypic assays and to validate and test such assays on Transgenic Animals. 
  
 2.2 Research Plan. The initial Research Plan is described in the attached Exhibit A. As the Research Plan is modified
by mutual agreement of the parties, the modified version shall be appended to Exhibit A and made part of this Agreement. 
  
 2.3 Research Committee 
  
 2.3.1 Purpose. Pfizer and Xenogen Cranbury shall establish a Research Committee (the “Research Committee”): 

 
 (a) to review and evaluate progress under the Research Plan; 

 
 (b) to prepare the Research Plan, and amendments and evaluate the need
for extensions to the Agreement; 
  
 (c) to propose, discuss,
select and document in writing, the mutual acceptance of Assays in the Area to be included in the Research Plan; 
  
 (d) to coordinate and monitor publication as provided under Section 4.7 of this Agreement, of Results (this function shall survive termination of this
Agreement for five (5) years); and 
  
 (e) to designate Assays as
either Level I, Level II, or Level III. 
  
 2.3.2
Membership. Each of Pfizer and Xenogen Cranbury shall appoint, in its sole discretion, three members to the Research Committee. Each party may replace its respective Research Committee members at any time, with prior written notice to the
other party hereto. The parties initially appoint the following members: 
  

			
	Pfizer Appointees:	  	John McNeish
	 	  	 Andrew Reaume
 Kelly Longo


  

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	Xenogen Cranbury Appointees:	  	 David Grass
 Olesia Buiakova
 Satbir Kaur


  
 2.3.3
Chair. The Research Committee shall be chaired by two co-chairpersons, one appointed by Pfizer and the other appointed by Xenogen Cranbury. 
  
 2.3.4 Meetings. The Research Committee shall meet at least quarterly, at places selected by each party in turn and on dates
mutually agreed by the parties. The location of the first meeting of the Research Committee shall be at Pfizer’s election. Representatives of Pfizer or Xenogen Cranbury or both, in addition to members of the Research Committee, may attend such
meetings at the invitation of either party. Any materials to be submitted to the members of the Research Committee shall be delivered to each member not less than five (5) business days before the meeting. 
  
 2.3.5 Minutes. The Research Committee shall keep
accurate minutes of its deliberations which record all proposed decisions and all actions recommended or taken. Drafts of the minutes shall be delivered to all Research Committee members within five (5) business days after each meeting. The party
choosing the location for the meeting shall be responsible for the preparation and circulation of the draft minutes. Draft minutes shall be edited by the co- chairpersons and shall be issued in final form only with their approval and agreement.

  
 2.3.6 Decisions. All decisions of the
Research Committee shall be made by mutual agreement except that Pfizer, in its sole discretion, shall decide the overall direction of the Research Program. 
  
 2.3.7 Expenses. Pfizer and Xenogen Cranbury shall each bear all expenses, including reasonable travel, related to the participation
of their designated members of the Research Committee, respectively. 
  
 2.4 Reports and Materials. 
  
 2.4.1 Reports. During the Contract Period, Xenogen Cranbury shall furnish to the Research Committee: 
  
 (a) summary written reports within fifteen (15) days after the end of each three-month period commencing on the Effective Date, describing the progress
under the Research Plan; 
  

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 a comprehensive written report within thirty (30) days after the end of the Contract
Period, describing in detail the work accomplished by it under the Research Plan during the Contract Period and discussing and evaluating the results of such work; 
  
 a written report describing the detailed protocols of all assays developed under the Research Program;

  
 a written report detailing Results. Such
reports will be submitted at the end of Phase 1A, 1B and Phase 2 of Tracks I and II; and 
  
 (e) any report containing information that Xenogen Cranbury may generate using Level II Assays for Third Parties during the Term, pursuant to Section 4.3. 
  
 2.4.2 Materials. During the Contract Period, each party shall provide the other, to the extent
necessary for the receiving party to perform its responsibilities under the Research Plan, with Transgenic Animals, Control Animals, Pfizer Compounds, which are part of Pfizer Technology, Xenogen Cranbury Technology or Program Technology. Such
supply of materials and Technology shall be in accordance with the Research Plan, or as a party may otherwise reasonably request from time to time and the other party agree to provide. To the extent that the quantities of materials requested and
supplied by the parties exceed the quantities required to be provided under the Research Plan, the requesting party shall reimburse the other for the reasonable costs of such materials. Each party shall use and store such materials in accordance
with all applicable laws and regulations, and shall exert due care in so doing. 
  
 2.5 Laboratory Facilities and Personnel. Xenogen Cranbury and Pfizer each shall provide laboratory facilities, equipment and personnel, in each case suitable to the need, for carrying out the Research Program.

  
 2.6 Diligent Efforts. Pfizer and Xenogen Cranbury each
shall use reasonably diligent efforts to achieve the objectives of the Research Program. Xenogen Cranbury will use reasonably diligent efforts to achieve the objectives listed in the Research Plan and Pfizer will use reasonably diligent efforts to
assist Xenogen Cranbury in such efforts. 
  
 2.7 Key
Investigators. If Drs. Satbir Kaur’s, David Grass’ or Olesia Buiakova’s employment with Xenogen Cranbury ends for any reason and the 

  

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parties are unable to agree on a successor reasonably acceptable to Pfizer, Pfizer may terminate this Agreement pursuant to Section 8. 
  
 2.8 Delays. Any schedules or milestone dates of a party hereunder
shall be extended to: (i) account for any delays in obtaining information, or materials from the other party which are not caused by any fault of such party; and (ii) account for any modifications to the Research Plan which affect schedules or
milestone dates. To the extent that any such delays or modifications are projected to impose additional costs on one of the parties, both Xenogen Cranbury and Pfizer shall mutually agree on the reimbursement due on account of such additional
costs. Notwithstanding the foregoing, to the extent that the non-delaying party accrues labor and other resource costs which remain idle with respect to the Research Program due to such delays, the non-delaying party shall be entitled to
reimbursement from the other party for such documented cost of such idled resources. 
  
 3. PAYMENTS 
  
 3.1 Research Program
Funding. In consideration for its performance of the Research Program, Pfizer will pay Xenogen Cranbury up to Nine Million Dollars ($9,000,000) upon receipt of invoice from Xenogen Cranbury, payable as follows: 
  

	 	(a)	Within thirty (30) days of the execution of this Agreement, a fee of One Million Dollars ($1,000,000) to be utilized for staffing, administrative and equipment acquisition costs
over and above normal on going expenses. 

  

	 	(b)	Within thirty days of the execution of the Agreement, a fee of One Million Dollars ($1,000,000) to be utilized for Start-UP Costs. 

  

	 	(c)	On the first business day of each calendar quarter during the first and second years of this Agreement, a payment of *** against Xenogen Cranbury’s invoice for such calendar
quarter work to be performed and costs to be incurred in such calendar quarter; 

  

	 	(d)	On the first business day of each calendar quarter during the third year of this Agreement, a payment of *** against Xenogen Cranbury’s invoice for such calendar quarter work
to be performed and costs to be incurred in such calendar quarter; 

  

	 	(e)	During the third year of this Agreement, payments aggregating up to *** in equal 

  
  
 *** CONFIDENTIAL TREATMENT GRANTED 
  

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quarterly installments, due on the first business day of each quarter, against Pfizer’s receipt from Xenogen Cranbury during that year of quarterly
reports containing Results achieved pursuant to the Research Plan, including detailed data regarding the phenotypic analysis of Transgenic Animals and Xenogen Cranbury’s invoice for such report; and 
  
 (f) Up to *** against delivery by Xenogen Cranbury to Pfizer of protocols
for Track I and Track II Assays, as described in the Research Plan attached hereto, as the same may be amended by the parties, of which sum *** shall be payable upon Xenogen Cranbury’s completion of Phase IB of Track I and initiating the
testing of Control Animals in Track I Assays, the protocols for which Xenogen Cranbury shall have prepared and submitted to Pfizer for its approval (such approval not to be unreasonably withheld); and the remaining *** shall be payable upon Xenogen
Cranbury’s completion of Phase IB of Track II and initiating the testing of Control Animals in Track II Assays, the protocols for which Xenogen Cranbury shall have prepared and submitted to Pfizer for its approval (such approval not to be
unreasonably withheld). 
  
 At Pfizer’s option, it may
extend this Agreement for two successive one-year periods by providing 90 days’ prior written notice to Xenogen Cranbury. 
  
 If during the term of this Agreement Pfizer requests Xenogen Cranbury to perform phenotypic analysis on Transgenic Animals in addition to those Transgenic
Animals identified in the Research Plan, Xenogen Cranbury will perform such services, allocating its capacity to perform such services for Pfizer on a priority basis, to the extent it is reasonably able to do so, consistent with Xenogen
Cranbury’s existing and anticipated contractual commitments. Such services shall be priced at the same rate as reflected in the Research Plan. 
  
 3.2 Payment. All payments by Pfizer under this Agreement shall be paid in U.S. currency and shall be non-refundable. Pfizer shall make such
payments in such form and to an account as specified by Xenogen Cranbury’s invoices. 
  
 3.3 Records. Xenogen Cranbury shall keep for three (3) years from the conclusion of each calendar year complete and accurate records of its costs and expenses incurred hereunder. The records shall conform to
good accounting 
  
  
  
 *** CONFIDENTIAL TREATMENT GRANTED 
  

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principles as applied to a similar company similarly situated. Pfizer shall have the right, at its own expense, during the term of this Agreement and during
the subsequent three-year period to appoint an independent certified public accountant reasonably acceptable to Xenogen Cranbury to inspect said records to verify the accuracy of such expenditures of efforts, pursuant to each Research Plan. Upon
reasonable notice by Pfizer, Xenogen Cranbury shall make its records available for inspection by the independent certified public accountant during regular business hours at the place or places where such records are customarily kept, to verify the
accuracy of the expenditures of efforts. This right of inspection shall not be exercised more than once in any calendar year and not more than once with respect to records covering any specific period of time. All Xenogen Cranbury information
concerning such expenditures of efforts, and all information learned in the course of any audit or inspection, shall be Xenogen Cranbury Confidential Information and not used or disclosed by Pfizer except to the extent necessary for Pfizer to
enforce its rights under this Agreement or to comply with law. The failure of Pfizer to request verification of any expenditures of efforts before or during the three-year period shall be considered acceptance by Pfizer of the accuracy of such
expenditures of efforts, and Xenogen Cranbury shall have no obligation to maintain any records pertaining to such report or statement beyond such three-year period. The findings of such inspection, if any, shall be binding on the parties.

  
 4. TREATMENT OF CONFIDENTIAL INFORMATION 
  
 4.1 Confidentiality 
  
 4.1.1 Except as expressly provided herein, the parties agree
that, for the term of this Agreement and for five (5) years thereafter, each party shall protect from disclosure and shall not use for any purpose as contemplated by this Agreement, any Confidential Information of the other party (Xenogen Cranbury
Confidential Information and Pfizer Confidential Information, as the case may be). Each party acknowledges that the Confidential Information of the other party constitutes highly valuable, proprietary information which is not publicly available.

  
 4.1.2 Each party shall only disclose
Confidential Information of the other party to its officers, employees or agents or those of its Affiliates to the extent necessary for such party to perform its responsibilities under this Agreement. Each party shall take such actions, and shall
cause its Affiliates and sublicensees to take such action, to preserve the confidentiality of the other party’s Confidential Information as it would customarily take to preserve the confidentiality of its own Confidential Information. On the
first to occur of the termination or expiration of this Agreement or the other party’s written request, each party will return, within sixty (60) days, all Confidential Information of the 

  

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other party, including all copies and extracts of documents, except for one (1) copy which each party may keep solely to enable it to comply with its
continuing obligations under this Agreement. 
  
 4.1.3 Each party represents and covenants that all of its employees, and any consultants of such party participating in the Research Program with access to Program Technology, Xenogen Cranbury Technology, Pfizer Technology, Xenogen Cranbury
Confidential Information, or Pfizer Confidential Information are, and during the term of this Agreement shall continue to be, bound by agreement to maintain such information in confidence and use them only for the purposes of this Agreement.

  
 4.2 Use by Xenogen Cranbury of Data Relating to Level I and
Level II Assays Performed on Pfizer Control Animals. At any time, Xenogen Cranbury may disclose to Third Parties results of Level I and Level II Assays performed on Control Animals, provided that under no circumstances shall such disclosure
contain any information relating to any Pfizer Compounds, including Results derived from animals tested with Pfizer Compounds. 
  
 4.3 Use By Pfizer of Data Relating to Level II Assays Performed on Control Animals of Third Parties. During the term of this Agreement, if Xenogen
Cranbury uses any Level II Assays to perform Contract Research Services, it will make available to Pfizer at no charge and in a reasonably timely manner a copy of the report containing the results of such Level II Assays (a) as such results pertain
to control animals used in such Level II Assays, (b) to the extent that the Third Party does not prohibit Xenogen Cranbury from providing such information and (c) subject to Pfizer agreeing to use such information only for internal research
purposes. 
  
 4.4 Publicity. Except as required by law, and
except for a mutually approved press release to be issued upon signing of this Agreement, neither party may disclose the terms of this Agreement nor the research described in it without the written consent of the other party, which consent shall not
be unreasonably withheld; provided, however, that Xenogen Cranbury may disclose the terms, or provide copies of this Agreement under confidentiality as necessary in the normal course of business to bankers, investors and others to obtain financing.

  
 4.5 Disclosure Required by Law. If either party is
required by law to disclose any Confidential Information of the other party, in connection with a legal or administrative proceeding, such party will promptly notify the other party in writing of such requirement or request. If the party whose
Confidential Information is the subject of such requested disclosure seeks appropriate protective orders or other remedies to prevent or limit such disclosure, the other party will 

  

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cooperate with such effort. If the party whose Confidential Information is the subject of such requested disclosure fails to obtain such remedy, or provides
the other party with a written waiver of its confidentiality obligations regarding the Confidential Information covered by such legal requirement or request, then the other party may comply with such requirement or request by disclosing only such
portion of Confidential Information as its legal counsel determines it is required to disclose. 
  
 4.6 Disclosure of Inventions. If, in the course of performing the Research Program, any employee or consultant of either party makes any invention
within Program Technology, then such party shall promptly inform the other of such invention. Xenogen Cranbury shall cooperate with Pfizer, at Pfizer’s expense, to prosecute and protect any patents or other intellectual property rights in such
invention. Such cooperation shall include without limitation identification of all inventors and assignment by all inventors of patent or other rights to Pfizer in such invention. 
  
 4.7 Publication. Notwithstanding this Agreement’s provisions regarding confidentiality, results obtained in the
course of the Research Program may be submitted for publication only after scientific review by the Research Committee and subsequent approval by management of both Xenogen Cranbury and Pfizer, who’s approval or disapproval shall be given
within thirty (30) days of their receipt of manuscripts and within fourteen (14) days of their receipt of an abstract for presentation at, or inclusion in the proceedings of a scientific meeting, or for a transcript of an oral presentation to be
given at a scientific meeting. 
  
 5. INTELLECTUAL PROPERTY RIGHTS

  
 5.1 Ownership. Xenogen Cranbury Technology shall
be owned by Xenogen Cranbury. All Pfizer Technology and Program Technology made in connection with the Research Program shall be owned by Pfizer. 
  
 5.2 Licenses to Pfizer. 
  
 5.2.1 Subject to the terms and conditions of this Agreement, Xenogen Cranbury grants to Pfizer a perpetual, worldwide, non-exclusive,
royalty-free license to make and use, but not to sell, Xenogen Cranbury Technology (i) for Pfizer to perform the Research Program, and (ii) to the extent necessary for Pfizer to use the Program Technology. 
  

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 5.2.2 Subject to the terms and conditions of this Agreement, Xenogen Cranbury grants to
Pfizer a perpetual, worldwide, non-exclusive, royalty-free license, without the right to sublicense, to make and use, but not to sell the Level IIIXC Assays. In addition, Pfizer may use the Level IIIXC Assays with Third Parties provided only that
Pfizer shall own all and any intellectual property resulting from such use. 
  
 5.3 Licenses to Xenogen Cranbury 
  
 5.3.1 Subject to the terms and conditions of this Agreement, Pfizer grants to Xenogen Cranbury a worldwide, non-exclusive, royalty-free license to make and use, but not to sell Pfizer Technology (i) for Xenogen
Cranbury to perform the Research Program, and (ii) to the extent necessary for Xenogen Cranbury to use the Program Technology within the scope of the license granted in 5.3.2. 
  
 5.3.2 Subject to the terms and conditions of this Agreement, Pfizer grants to Xenogen Cranbury a worldwide,
perpetual, non-exclusive, royalty-free license, without the right to sublicense, to make, use, and sell Program Technology, other than Level IIIP Assays. For the avoidance of doubt, pursuant to this Section 5.3.2 Pfizer agrees that Xenogen Cranbury
may disclose to Third Parties, any and all protocols relating to the Program Technology (other than Level IIIP Assays) in connection with Xenogen Cranbury’s performance of Contract Research Services for Third Parties. 
  
 5.3.3 Subject to the terms and conditions of this Agreement,
Pfizer grants to Xenogen Cranbury a perpetual worldwide, non-exclusive, royalty-free license, without the right to sublicense, to make, use, and sell Level IIIP Assays to perform Contract Research Services after the Period of Exclusivity. For the
avoidance of doubt, pursuant to this Section 5.3.3 Pfizer agrees that Xenogen Cranbury may disclose to Third Parties, any and all protocols relating to the Level IIIP Assays in connection with Xenogen Cranbury’s performance of Contract Research
Services for Third Parties after the Period of Exclusivity. 
  
 6.
ACQUISITION OF RIGHTS FROM THIRD PARTIES 
  
 During
the Contract Period, Xenogen Cranbury and Pfizer shall each promptly notify each other of any appropriate opportunities to acquire in any manner from third parties, technology or patents or information which it proposes 

  

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to use in the course of performing the Research Program. Xenogen Cranbury and Pfizer shall discuss if such rights should be acquired in connection with the
Research Program and, if so, whether by Xenogen Cranbury, Pfizer or both and how the costs for such acquisition should be allocated, it being understood that nothing herein shall obligate either party to obtain such rights or, if it does acquire
such rights, to make such rights available for use in the Research Program. 
  
 7. OTHER AGREEMENTS 
  
 This Research
Agreement, together with its Exhibits, sets forth the entire agreement between the parties with respect to the subject matter and supersede all other agreements and understandings between the parties with respect to same. 
  
 8. TERM, TERMINATION AND DISENGAGEMENT 
  
 8.1 Term. Unless sooner terminated as provided below or extended by
mutual agreement of the parties, this Agreement shall expire on December 28, 2003. 
  
 8.2 Events of Termination. The following events shall constitute events of termination (“Events of Termination”): 
  
 (a) if any written representation or warranty by Xenogen Cranbury or Pfizer, made in Section 9.1 shall prove
to have been incorrect in any material respect when made; and 
  
 (b) Xenogen Cranbury or Pfizer shall fail in any material respect to perform or observe any term, covenant or understanding contained in this Agreement or in any of the other documents or instruments delivered
pursuant to, or concurrently with, this Agreement, and any such failure shall remain unremedied for thirty (30) days after written notice to the failing party. 
  

Except as provided in Section 8.2(b), upon the occurrence of any Event of Termination, the party not responsible may, by written notice
to the other party, terminate this Agreement. 
  
 8.3 Effects
of Termination. 
  
 8.3.1 Termination of this
Agreement by either party pursuant to Section 8.2 will not terminate the confidentiality obligations and the exclusivity and licenses pursuant to Section 4.1, 5.2 and 5.3. 
  
 8.3.2 In the event of termination by either party pursuant to this Section 8, neither party shall be liable
to the other because of such termination, for compensation, reimbursement of damages on account of the loss of prospective profits, of anticipated sales or on account of expenditures, inventory, investments, 

  

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leases or commitments in connection with the business or goodwill of Xenogen Cranbury or Pfizer. 
  
 8.3.3 Notwithstanding the foregoing Section 8.3.2,
termination of this Agreement for any reason shall not release any party hereto from any liability which, at the time of such termination, has already accrued to the other party or which is attributable to a period prior to such termination nor
preclude either party from pursuing any rights and remedies it may have hereunder or at law or in equity with respect to any breach of this Agreement, including without limitation Xenogen Cranbury’s right to receive all payments accrued under
Section 3. 
  
 9. REPRESENTATIONS AND WARRANTIES; LIMITATION OF
LIABILITY 
  
 9.1 Representations, Warranties and
Covenants. Xenogen Cranbury and Pfizer each represents and warrants as follows: 
  
 9.1.1 It is a corporation duly organized, validly existing and is in good standing under the laws of the States of Ohio and Delaware,
respectively, is qualified to do business and is in good standing as a foreign corporation in each jurisdiction in which the conduct of its business or the ownership of its properties requires such qualification; and it has all requisite power and
authority, corporate or otherwise, to conduct its business as now being conducted, to own, lease and operate its properties and to execute, deliver and perform this Agreement. 
  
 9.1.2 The execution, delivery and performance by it of this Agreement have been duly authorized by all
necessary corporate action and do not and will not (a) require any consent or approval of its stockholders beyond the approvals already obtained, (b) violate any provision of any law, rule, regulations, order, writ, judgement, injunction, decree,
determination or award presently in effect having applicability to it or any provision of its certificate of incorporation or by-laws or (c) result in a breach of or constitute a default under any material agreement, mortgage, lease, license, permit
or other instrument or obligation to which it is a party or by which it or its properties may be bound or affected. 
  
 9.1.3 This Agreement is a legal, valid and binding obligation of it enforceable against it in accordance with its terms and conditions,
except as such enforceability may be limited by applicable bankruptcy, insolvency, moratorium, reorganization or similar laws, from time to time in effect, affecting creditor’s rights generally. 
  
 9.1.4 It is not under, and will not enter into, any
obligation to any person, or entity, contractual or otherwise, that is conflicting or inconsistent in any 

  

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respect with the terms of this Agreement or that would impede the diligent and complete fulfillment of its obligations. 
  
 9.1.5 It has the right, power and title to enter into this
Agreement and grant the rights and licenses and/or sublicenses granted herein. 
  
 9.2 Disclaimer of Warranties. EXCEPT FOR THE EXPRESS WARRANTY SET FORTH ABOVE IN SECTION 9.1, NEITHER XENOGEN CRANBURY NOR PFIZER MAKES ANY OTHER WARRANTIES (EXPRESS, IMPLIED, STATUTORY OR OTHERWISE) WITH
RESPECT TO THE XENOGEN CRANBURY TECHNOLOGY, PFIZER TECHNOLOGY, AND PROGRAM TECHNOLOGY, AND SPECIFICALLY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, AND ALL WARRANTIES OF NONINFRINGEMENT OF THIRD
PARTY INTELLECTUAL PROPERTY RIGHTS. 
  
 9.3 LIMITATION OF
LIABILITY. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER OR ANY OTHER ENTITY FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL OR INDIRECT DAMAGES, UNLESS SUCH PARTY DEMONSTRATES THAT THE OTHER PARTY’S BREACH CONSTITUTED WILLFUL MISCONDUCT
OR GROSS NEGLIGENCE. 
  
 9.4 Covenants. Throughout the
Contract Period, Xenogen Cranbury and Pfizer each shall: 
  
 9.4.1 maintain and preserve its corporate existence, rights, franchises and privileges in the jurisdiction of its incorporation, and qualify and remain qualified as a foreign corporation in good standing in each
jurisdiction in which such qualification is from time to time necessary or desirable in view of their business and operations or the ownership of their properties; and 
  
 9.4.2 comply in all material respects with the requirements of all applicable laws, rules, regulations and
orders of any government authority to the extent necessary to conduct the Research Program, except for those laws, rules, regulations, and orders it may be contesting in good faith. 
  
 10. INDEMNIFICATION 
  
 Pfizer and Xenogen Cranbury each will indemnify, defend and hold each other harmless for any and all damages, settlements, costs, legal fees and other
expenses incurred in connection with a claim by a third party against either party based on any action or omission of the indemnifying party’s agents, employees, or 

  

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officers related to its obligations under this Agreement; provided, however, that the foregoing shall not apply (i) if the claim is found to be based upon
the gross negligence, recklessness or willful misconduct of the party seeking indemnification; or (ii) if such party fails to give the other party prompt notice of any claim it receives and such failure materially prejudices the other party with
respect to any claim or action to which its obligation pursuant to this Section applies. Notwithstanding the foregoing, Pfizer hereby expressly agrees to indemnify, defend and hold harmless Xenogen Cranbury (and all officers, directors, agents and
Affiliates of Xenogen Cranbury) for any and all claims arising from clinical trials pursued by Pfizer or its Affiliates and/or sublicensees, the exercise of rights granted to Pfizer under Section 5.2 and/or claims arising from patent rights, Pfizer
patent rights, Program Technology and Pfizer Technology except for intellectual property claims with respect to Xenogen Cranbury patent rights, or Xenogen Cranbury Technology. The indemnifying party agrees to pay, subject to the limitations set
forth herein, any final judgement entered against the indemnified party on such issue in any such claim defended by the indemnifying party. Each party shall cooperate with the other during the course of such a claim, and the indemnifying party shall
keep the indemnified party(ies) reasonably informed of the progress and status of the claim. The indemnifying party, in its sole discretion, shall choose legal counsel, shall control the defense of such claim or action and shall have the right to
settle same on such terms and conditions it deems advisable. 
  
 11.
NOTICES 
  
 All notices shall be in writing mailed via
certified mail, return receipt requested, courier, or facsimile transmission addressed as follow, or to such other address as may be designated from time to time: 
  

			
	 If to Pfizer:
	  	 Pfizer Global Research & Development
 Eastern
Point Road
 Groton, CT 06340
 Attention: President of Strategic
Operations –
 PGRD – Groton
 copy to: Assistant General
Counsel – PGRD – Groton


  

 -17- 










			
	If to Xenogen Cranbury:	  	 Xenogen Biosciences
 5 Cedar Brook Drive
 Cranbury, NJ 08512

		
	with a copy to:	  	 Xenogen Corporation
 860 Atlantic Avenue
 Alameda, CA 94501
 Attn: General Counsel


  
 Notices shall be deemed given as of
the date received at the above specified address. 
  
 12. GOVERNING LAW

  
 This Agreement shall be governed by and construed in
accordance with the laws of the State of New Jersey, without reference to its conflict of laws rules. The U.N. Convention on for the Sale of Goods shall not apply. The exclusive venue of any dispute arising out of or in connection with the
performance or breach of this Agreement shall be the New Jersey state courts located in Middlesex County, New Jersey or the U.S. district court for the District of New Jersey. 
  
 13. MISCELLANEOUS 
  
 13.1 Binding Effect. This Agreement shall be binding upon and inure to the benefit of the parties and their respective legal representatives,
successors and permitted assigns. 
  
 13.2 Headings.
Paragraph headings are inserted for convenience of reference only and do not form a part of this Agreement. 
  
 13.3 Counterparts. This Agreement may be executed simultaneously in two or more counterparts, each of which shall be deemed an original. Signatures
may be transmitted via facsimile, thereby constituting the valid signature and delivery of this Agreement. 
  
 13.4 Amendment, Waiver. This Agreement may be amended, modified, superseded or cancelled, and any of the terms may be waived, only by a written
instrument executed by each party or, in the case of waiver, by the party or parties waiving compliance. The delay or failure of any party at any time or times to require performance of any provisions shall in no manner affect the rights at a later
time to enforce the same. No waiver by any party of any condition or of the breach 

  

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of any term contained in this Agreement, whether by conduct, or otherwise, in any one or more instances, shall be deemed to be, or considered as, a further
or continuing waiver of any such condition or of the breach of such term or any other term of this Agreement. 
  
 13.5 No Third Party Beneficiaries. No third party including any employee of any party to this Agreement shall have or acquire any rights by reason
of this Agreement. Nothing contained in this Agreement shall be deemed to constitute the parties partners with each other or any third party. 
  
 13.6 Assignment and Successors. This Agreement may not be assigned by either party, except that each party may assign this Agreement and the rights
and interests of such party, in whole or in part, to any of its Affiliates, any purchaser of all or substantially all of its assets related to the subject matter of this Agreement, or to any successor corporation resulting from any merger or
consolidation of such party with or into such corporations. 
  
 13.7 Force Majeure. Neither Pfizer nor Xenogen Cranbury shall lose any rights hereunder or be liable to the other for damages or losses (except for payment obligations) on account of failure of performance by the defaulting party if
the failure is occasioned by war, strike, fire, Act of God, earthquake, flood, lockout, embargo, governmental acts or orders or restrictions, failure of suppliers, or any other reason where failure to perform is beyond the reasonable control, and
not caused by the negligence, intentional conduct or misconduct, of the nonperforming party and the nonperforming party has exerted all reasonable efforts to avoid or remedy such force majeure; provided, however, that in no event shall a party be
required to settle any labor dispute or disturbance. 
  
 13.8
Severability. If any provision of this Agreement is or becomes invalid or is ruled invalid by any court of competent jurisdiction or is deemed unenforceable, it is the intention of the parties that the remainder of the Agreement shall not be
affected so long as the essential benefits of this Agreement remain enforceable and obtainable. 
  
 IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by their duly authorized representatives. 
  

									
	PFIZER INC	 	 	 	XENOGEN BIOSCIENCES
					
	By:	 	 /s/ George M. Milne, Jr.
	 	 	 	By:	 	 /s/ Pamela Reilly Contag

	 	 	
	 	 	 	 	 	

	 Name:
	 	 George M. Milne, Jr.
	 	 	 	 Name:
	 	 Pamela Reilly Contag

	 Title
	 	 Senior Vice President
	 	 	 	 Title
	 	 President


  

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 EXHIBIT A 
  

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 *** CONFIDENTIAL TREATMENT GRANTED 








 EXHIBIT B 
  

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 *** CONFIDENTIAL TREATMENT GRANTED 








 EXHIBIT C 
  

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 *** CONFIDENTIAL TREATMENT GRANTED