exv10w19w1






Exhibit 10.19.1



Certain information in this document, marked by brackets, has been omitted and filed
separately with the Securities and Exchange Commission. Confidential treatment has
been requested with respect to the omitted portions.




AMENDMENT NO. 1 TO LICENSE AGREEMENT




     This Amendment No. 1 (“Amendment No. 1”) amends that certain License Agreement effective March
28, 2002 (the “Agreement”) entered by and between Maxygen, Inc. (“MUS”) and Codexis, Inc.
(“Codexis”), and shall be effective as of September 13, 2002 (the “Amendment Date”). MUS and
Codexis hereby amend the License Agreement as follows:




	1.	 	Article 1 is amended by the addition of the following new definitions:






     1.54 “Category” shall mean each of the identified categories listed on Exhibit G.




     1.55 “Reserved SubField Termination Date” shall mean the period commencing on the
Amendment Date and ending on the later of (i) five (5) years after the Amendment Date, or
(ii) a Separation Event.




     1.56 “Reserved SubFields” shall mean, in the period from the Amendment Date until the
Reserved SubField Termination Date, the subject matter within the SubFields. It is
understood and agreed that (i) as of the Reserved SubField Termination Date, one or more of
the SubFields may become part of the Codexis Field pursuant to Section 2.1.6(d), and (ii) as
of the Reserved SubField Termination Date, the Reserved SubFields (including each Category
and SubField) shall be terminated, and shall have no content or force or effect for the
remainder of the term of the Agreement.




     1.57 “Scheduled Product” shall mean any chemical described on Exhibit F.




     1.58 “SubField” shall mean each of the identified SubFields listed on Exhibit G.




     1.59 “Supplemental Product” shall mean (a) any chemical within a Category with regard
to which Category Codexis conducts a research project meeting the criteria set forth in
Section 2.1.6(a) prior to the Reserved SubField Termination Date and (b) each chemical that
is within a SubField that becomes part of the Codexis Field as of the Reserved SubField
Termination Date pursuant to Section 2.1.6(d).




	2.	 	Section 1.10 is amended to provide in its entirety, as follows:






     1.10 “Bulk Production” shall mean production by Codexis via enzymatic catalysis (using
an Enzyme Product or a Biocatalyst) or fermentation of:




          (a) any Enzyme Product or Biocatalyst for sale to a Third Party (other than an
Affiliate of Codexis) for manufacture of Catalysis Products, or




          (b) any Catalysis Product or Fermentation Product for sale to a Third Party (other than
an Affiliate of Codexis) for further processing or formulation, or



 









 






          (c) any Catalysis Product or Fermentation Product that will be formulated by Codexis
for sale to a Third Party, which Product contains one or more Functional Compounds approved
by a Regulatory Authority for human or veterinary pharmaceutical use, where such Functional
Compound(s) (i) is (are) no longer covered by issued patents in the country where such
production will occur, or (ii) is (are) covered by issued patents owned or Controlled by a
Third Party (other than an Affiliate of Codexis) that has contracted to have Codexis
formulate such Product on behalf of such Third Party, or




          (d) any Scheduled Product for sale to a Third Party (other than an Affiliate of
Codexis) for further processing or formulation, or




          (e) any Supplemental Product for sale to a Third Party (other than an Affiliate of
Codexis) for further processing or formulation.




	3.	 	Section 1.12 is amended to provide in its entirety, as follows:






     1.12 “Codexis Field” shall mean:




          (a) Biocatalyst Commercialization and Enzyme Commercialization, subject to the
limitations set forth in Section 2.2.2 and the rights of MUS and Third Parties described in
Section 2.8;




          (b) Building Block Development;




          (c) Bulk Production of Products (except Supplemental Products), subject to the
limitations set forth in Section 2.2.2 and the rights of MUS and Third Parties described in
Section 2.8;




          (d) Bulk Production of Supplemental Products to which Codexis has acquired rights
pursuant to Sections 2.1.6(c) or (d), subject to the limitations set forth in Section 2.2.2
and the rights of MUS and Third Parties described in Section 2.8.




	4.	 	Section 1.17 is amended to provide in its entirety, as follows:





          1.17 “Enabling Technology” shall mean all Patent Applications and Patents Controlled by
MUS that claim (i) methods of generating genetic diversity (including, without limitation,
DNA Shuffling with tangible materials or in silico), or the use thereof,
and/or (ii) generally applicable screening techniques, methodologies or processes for
identifying genetic variants of interest that: (a) are filed on or before the Separation
Event, or (b) claim inventions conceived and reduced to practice or otherwise developed on
or before the Separation Event, which Patent Application or Patent is filed on or before the
third anniversary of the Separation Event. Enabling Technology shall include MUS’ interest
in Third Party Improvements, if any. A list of Patent Applications and Patents within the
Enabling Technology existing as of the Effective Date is attached as Exhibit B hereto




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	5.	 	Section 1.40 is amended to provide in its entirety, as follows:






     1.40 “Product” shall mean any Catalysis Product, Enzyme Product, Scheduled Product,
Supplemental Product, Biocatalyst or Fermentation Product that:




          (a) is made or developed with the use of Enabling Technology, whether by Gene
Expression Manipulation and/or Metabolic Pathway Manipulation and/or Strain Improvement or
otherwise (e.g., incorporates any variant gene made with Enabling Technology, and/or any
protein or peptide expressed therefrom), and/or




          (b) is developed with the use of Product Technology, or incorporates, or is made using,
or is substantially derived from, Product Technology.




	6.	 	Section 1.41 is amended to provide in its entirety, as follows:






     1.41 “Product Technology” shall mean the Patent Applications and Patents Controlled by
MUS on or before the Separation Event that are necessary or useful for use in the Codexis
Field, that are not included in Enabling Technology or the Assigned Patents. A list of the
Patent Applications and Patents within the Product Technology existing as of the Effective
Date is attached as Exhibit D hereto.




	7.	 	Section 2.1.1 is amended to read in its entirety as follows:






     2.1.1 Licenses. Subject to the terms and conditions herein, including without
limitation Sections 2.2, 2.4, 2.6, 2.7 and 2.8, MUS hereby grants to Codexis, and Codexis
hereby accepts, irrevocable (except as provided in Sections 9.4.1, 12.2, 12.3 and 12.4),
worldwide, royalty-free (subject to Section 2.1.5(b)) licenses, as follows:




          (a) with respect to the Enabling Technology and related Know-How:




               (i) an exclusive license in Microbes to develop, make, have made, use, import, have
imported, offer for sale, sell or otherwise commercialize or distribute Products (including
those Supplemental Products that Codexis has acquired rights to pursuant to Section 2.1.6
(c), but excluding, until the Reserved SubField Termination Date, other Supplemental
Products) and corresponding Services in the Codexis Field; and




               (ii) a non-exclusive license in Category II Plants to develop, make, have made, use,
import, have imported, offer for sale, sell or otherwise commercialize or distribute
Products (including those Supplemental Products that Codexis has acquired rights to pursuant
to Section 2.1.6 (c), but excluding, until the Reserved SubField Termination Date, other
Supplemental Products) and corresponding Services in the Codexis Field; and




          (b) subject to the terms of Section 2.1.6(a), with respect to the Enabling Technology
and related Know-How, in the period from the Amendment Date until the Reserved SubField
Termination Date:



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               (i) an exclusive license in Microbes to develop, make, have made, use, import, have
imported, offer for sale, sell or otherwise commercialize or distribute Supplemental
Products and corresponding Services; and




               (ii) a non-exclusive license in Category II Plants to develop, make, have made, use,
import, have imported, offer for sale, sell or otherwise commercialize or distribute
Supplemental Products and corresponding Services; and




          (c) with respect to the Enabling Technology and related Know-How, a non-exclusive
license to develop, make and use Expression Hosts for Internal Research Use; and




          (d) with respect to the Product Technology and related Know-How:




               (i) an exclusive license in Microbes to develop, make, have made, use, import, have
imported, offer for sale, sell or otherwise commercialize or distribute Products (including
those Supplemental Products that Codexis has acquired rights to pursuant to Section 2.1.6
(c), but excluding, until the Reserved SubField Termination Date, other Supplemental
Products) and corresponding Services in the Codexis Field; and




               (ii) a non-exclusive license in Category II Plants to develop, make, have made, use,
import, have imported, offer for sale, sell or otherwise commercialize or distribute
Products (including those Supplemental Products that Codexis has acquired rights to pursuant
to Section 2.1.6 (c), but excluding, until the Reserved SubField Termination Date, other
Supplemental Products) and corresponding Services in the Codexis Field; and




          (e) subject to the terms of Section 2.1.6(a), with respect to the Product Technology
and related Know-How, in the period from the Amendment Date until the Reserved SubField
Termination Date:




               (i) an exclusive license in Microbes to develop, make, have made, use, import, have
imported, offer for sale, sell or otherwise commercialize or distribute Supplemental
Products and corresponding Services; and




               (ii) a non-exclusive license in Category II Plants to develop, make, have made, use,
import, have imported, offer for sale, sell or otherwise commercialize or distribute
Supplemental Products and corresponding Services.




	8.	 	Article 2.1 is revised by the addition of new Sections 2.1.6 and 2.1.7:






          2.1.6 Reserved SubField. With regard to the Reserved SubFields set forth on
Exhibit G:




               (a) Until the Reserved SubField Termination Date, Codexis may practice licenses as
described in Sections 2.1.1(b) and (e), on a Category-by-Category basis, if for such
Category Codexis:



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                    (i) enters into a written contract (including any government grant) with a Third Party
that will provide Codexis with at least US$2,000,000 over a continuous period of 24 months or
less from such Third Party to (a) conduct research using the Enabling Technology in the
applicable Category, or (b) develop for commercial uses Products subject to Section 1.40(a)
in the applicable Category; or




                    (ii) expends its own funds, in an amount of at least US$2,000,000 over a continuous period
of 24 months or less, to (a) conduct research using Enabling Technology in the
applicable Category, or (b) develop for commercial uses Products subject to Section 1.40(a)
in the applicable Category; or




                    (iii) expends its own funds and funds from a Third Party collaborator, which funds
total at least US$2,000,000 over a continuous period of 24 months or less, to conduct (a)
research using Enabling Technology in the applicable Category, or (b) develop for commercial
uses one or more Products in the applicable Category.




The Codexis Board of Directors (with appropriate recusals for interested party transactions)
must approve the transactions and/or Codexis expenditures described in this Section
2.1.6(a).




               (b) Commencing on the first anniversary of the Amendment Date and annually thereafter
on the anniversary of the Amendment Date until the Reserved SubField Termination Date, and
at Codexis’ option, at other times, Codexis shall provide MUS with a written report (i)
identifying all Supplemental Products and Categories with regard to which Codexis has
conducted research subject to Section 2.1.6(a) above, and (ii) reporting, by Category, the
amount of funds expended by Codexis to conduct research in each such Category in the
preceding twelve (12) month period.




               (c) If Codexis has conducted activities subject to Section 2.1.6(a) as to a particular
Category, Codexis shall notify MUS in writing (the “Category Notice”) providing a detailed
explanation of why it believes the Section 2.1.6(a) criteria have been fulfilled with regard
to the applicable Category. Within thirty (30) days following the date of such Category
Notice, senior business representatives of MUS and Codexis shall jointly prepare and sign a
written summary (the “Category Summary”) identifying the Category and corresponding
Supplemental Product(s) subject to Section 1.59(a). All Supplemental Products in such
agreed Category Summary shall be included in the Codexis Field (subject to the applicable
SubField exclusions set forth on Exhibit G) for all purposes of this Agreement, as of the
date of the applicable agreed Category Summary. Any dispute regarding the subject matter
that will be added to the Codexis Field pursuant to this Section 2.1.6(c) shall be resolved
as set forth in Article 13.




               (d) If Codexis has conducted activities that meet the criteria set forth in Section
2.1.6(a) above with regard to at least one-half of the Categories of any






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SubField, then, from and after the date of such occurrence (the “Subfield Inclusion
Date”), such entire SubField (including all its Categories) shall, subject to the applicable
SubField exclusions set forth on Exhibit G, thereafter be included in the Codexis Field for
all purposes of this Agreement. Within thirty (30) days following the SubField Inclusion
Date, senior business representatives of MUS and Codexis shall jointly prepare a written
summary identifying (i) those Supplemental Product(s) subject to Section 1.59(a) within
Categories that have not become part of the Codexis Field, and (ii) those Categories and
SubFields have become included in the Codexis Field. Any dispute regarding the subject
matter that will be added to the Codexis Field shall be resolved as set forth in Article 13.




               (e) After the Reserved SubField Termination Date, Codexis shall retain the right to
complete research regarding a particular Supplemental Product that it commenced prior to
such date pursuant to Section 2.1.6(a) if it has expended at least $1,000,000 on such research
with respect to such Supplemental Product by the Reserved SubField Termination Date, and to
commercialize Supplemental Products resulting from such activities, but otherwise Codexis
shall not have any other rights with regard to any Category(ies) or SubField(s) that are not
within the Codexis Field after the Reserved SubField Termination Date.




               (f) Until the date that Codexis acquires license rights under this Agreement to a
particular Supplemental Product pursuant to Sections 2.1.6 (c) or (d), Codexis may not grant
any Third Party (i) a sublicense to the Enabling Technology for the development or
manufacture of any Supplemental Product, or (ii) an option to (1) obtain a sublicense to the
Enabling Technology for use with regard to the development or manufacture of any
Supplemental Product, or (2) use the Enabling Technology to develop or manufacture any
Supplemental Product. It is understood and agreed that Codexis may grant such sublicenses
and options to Supplemental Products which have become included in the Codexis Field
pursuant to Section 2.1.6(c) above as a result of Codexis having satisfied the conditions of
2.1.6(a).




               (g) Until the Reserved SubField Termination Date, MUS will not (i) itself use the
Enabling Technology to develop or manufacture any Supplemental Product, or (ii) grant a
Third Party a license to use the Enabling Technology to develop or manufacture any
Supplemental Product.




               (h) It is understood and agreed that as of the Reserved SubField Termination Date, the
Reserved SubFields (including each Category and SubField) shall be terminated and shall have
no content or force or effect for the remainder of the term of the Agreement.




          2.1.7 Rights to Negotiate for Rights Outside the Codexis Field.





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               (a) Codexis Proposal. If Codexis wishes to use the Enabling Technology outside
the then-current scope of the Codexis Field to make a particular commodity chemical or fine
chemical, then Codexis shall have a right of negotiation to obtain from MUS a license to use
the Enabling Technology to make such specific products via processes proposed by Codexis.
In any such event, Codexis shall notify MUS in writing of the particular processes and
specific commodity chemical(s) or fine chemical(s). If Codexis notifies MUS that Codexis
wishes to negotiate for an expanded license to the Enabling Technology as described in this
Section 2.1.7(a), Codexis and MUS shall for a period of one hundred twenty (120) days from
Codexis’ notice, or such longer period as the parties may agree in writing, negotiate terms
and conditions for such license rights.




               (b) MUS Notice. If MUS wishes to use or license a Third Party to use the
Enabling Technology to make a particular commodity chemical or fine chemical for industrial
manufacturing applications outside the then-current scope of the Codexis Field, then until
the Separation Event, MUS shall notify Codexis, and Codexis shall have a first right of
negotiation to obtain from MUS a license to use the Enabling Technology to make such
specific products. In any such event, MUS shall notify Codexis in writing of the particular
processes and specific commodity chemical(s) or fine chemical(s), subject to any obligations
of confidentiality owed to a Third Party. If Codexis notifies MUS in writing within thirty
(30) days of notice by MUS pursuant to this Section 2.1.7(b) that Codexis wishes to
negotiate for an expanded license to the Enabling Technology for the applicable processes
and products, then for a period of one hundred twenty (120) days from MUS’ notice, or such
longer period as the parties may agree in writing, MUS and Codexis shall negotiate terms and
conditions for such license rights. For the avoidance of doubt, it is understood and agreed
that this Section 2.1.7(b) shall apply only to proposed uses of Enabling Technology for
manufacturing of commodity chemicals or fine chemicals for industrial applications, and
shall not apply to any other application outside the Codexis Field, including, without
limitation, to any proposed use for discovery, research, development or manufacturing of
pharmaceuticals, vaccines or Agrochemicals and/or for any application relating to
agriculture, e.g., processing of food or feed.




               (c) Agreement on Terms. If the Parties agree upon mutually acceptable terms
and conditions pursuant to Section 2.1.7(a) or Section 2.1.7(b), the Parties shall enter
into a written amendment to this Agreement modifying the license granted to Codexis as
appropriate to include the relevant rights and applicable chemicals. Neither Party shall be
obligated to accept or agree to such terms or conditions, or to enter into any agreement
regarding such expanded license rights. If MUS and Codexis do not agree upon mutually
acceptable terms and conditions within the applicable time period above, Codexis shall have
no right or license to use the Enabling Technology outside the then-existing Codexis Field.




	9.	 	Section 2.2.2(b)(i) is deleted, such that Section 2.2.2(b) provides in its entirety, as
follows:





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          (b) to make, have made, use, promote, market, distribute and/or sell any products
(including, without limitation, any Products) intended for use in the Detection and Research
Reagent Field; or




	10.	 	Section 2.2.2(c) is revised by the insertion of the word “itself” before the word “develop”.
	 
	11.	 	Revise Sections 2.2.2(f)(ii) and 2.2.2(h) by changing each occurrence of “discovery” to
“Discovery”, and revise Section 2.8.5 by changing “discover” to “conduct Discovery of”.
	 
	12.	 	Section 2.3 is amended to read in its entirety as follows:






     2.3 Right to Sublicense. Codexis (or its successor) may grant sublicenses to
the Enabling Technology, Product Technology and related Know-How to such Third Parties as it
deems appropriate, but such sublicenses may only grant rights to practice in the Codexis
Field; provided, Codexis may not (i) sublicense the rights granted in Section 2.1.1(c)
except in connection with a grant of a sublicense of the rights granted it in Section
2.1.1(a), or (ii) sublicense the rights granted it in Section 2.1.1(b) or 2.1.1(e). Codexis
(or its successor) may grant licenses to the Assigned Patents as it deems appropriate.




	13.	 	Section 2.7.1 is amended to provide in its entirety as follows:






     2.7.1 MUS. Notwithstanding the license grants in Section 2.1, the Parties
agree that:




          (a) MUS and its wholly-owned Affiliates shall, until the Separation Event, retain the
right to conduct research with the Enabling Technology and related Know-How in the Codexis
Field and/or the Reserved SubFields for the purpose of (i) improving and expanding Enabling
Technology, and/or (ii) exploring applications of the Enabling Technology for areas outside
the Codexis Field and/or the Reserved SubFields; provided, MUS and its wholly-owned
Affiliates shall not use the Enabling Technology for the primary intended purpose of
developing any Products or Services for use in the Codexis Field and/or the Reserved
SubFields, on its own behalf or on behalf of any Third Party.




          (b) At all times during and after this Agreement, nothing herein shall restrict, or be
construed to restrict, MUS’ right to practice and grant licenses to practice the Enabling
Technology and Product Technology and/or use related Know-How, outside the Codexis Field
and/or the Reserved SubFields.




          (c) It is understood and agreed that, at all times, MUS shall retain (i) the right
(sublicensable to its Affiliates) to internally use the Enabling Technology, Product
Technology and related Know-How to conduct Discovery and development of pharmaceutical
and/or Agrochemical products by any means (which may include, without limitation, the
development of Building Blocks, the addition of Building Blocks to Templates and/or
analoging of Functional Compounds), and to conduct



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commercialization of such products; and
(ii) the sublicensable right to make and/or have made, use, import, have imported, offer for
sale and/or sell any such products.




	14.	 	Section 2.7.2 is revised to provide in its entirety as follows:






     2.7.2 Codexis. Except as expressly set forth in this Agreement, nothing herein
shall limit the ability of Codexis to use any intellectual property, tangible property or
technology not subject to this Agreement, whether the foregoing is developed by it or
acquired by it (by license, acquisition or otherwise) for any purpose, in or outside the
Codexis Field.




	15.	 	Section 3.2 is amended to provide in its entirety, as follows:






     3.2 License to MUS. In partial consideration for the rights granted herein,
Codexis shall grant and hereby grants, and MUS hereby accepts, the following licenses:




          (a) with respect to Patent Applications and Patents within the scope of Section 1.4(a),
an exclusive, worldwide, royalty-free, irrevocable license, with the right to grant and
authorize sublicenses; and




          (b) with respect to Patent Applications and Patents within the scope of Section 1.4(b),
subject to the terms of the applicable Third Party Agreement as described in Section 3.3.1,
an exclusive (to the extent permitted by the applicable Third Party Agreement), worldwide
(to the extent permitted by the applicable Third Party Agreement), royalty-free (subject to
Section 3.3.2), irrevocable (to the extent permitted by the applicable Third Party
Agreement) license, with the right to grant and authorize sublicenses,




     in each case, to develop, make, have made, use, import, have imported, offer for sale,
sell or otherwise commercialize or distribute Products and Services solely outside the
Codexis Field, and until the Reserved Termination Date, the Reserved SubFields.




	16.	 	Article 4 is amended to read in its entirety as follows:






4. COVENANTS




     4.1 Use Within the Codexis Field. Codexis covenants that it will not knowingly
practice its licenses to the Enabling Technology and related Know-How, or its licenses to
the Product Technology and related Know-How, for the purpose of developing or
commercializing Products or Services for use outside the Codexis Field and/or the Reserved
SubField. Codexis further covenants that it will not knowingly make or permit any of its
Sublicensees or contractors to knowingly make any release into the environment of any
Microbe or any Plant which has been modified with the use of Enabling Technology (e.g.,
outside a container or containment vessel which precludes exit of any such Microbes or
Plants from such container or vessel), without the prior written consent of MUS.




     4.2 Use Outside the Codexis Field. MUS covenants that it will not knowingly
use its retained rights with regard to the Enabling Technology or the Product Technology,



9









 






or
knowingly practice its license to Codexis Improvements (if any), for the purpose of
developing or commercializing Products or Services for use in the Codexis Field and/or the
Reserved SubField; provided that such covenants shall be subject to Section 2.7.1 and
further provided that such covenants shall terminate with regard to any Patent Applications
and/or Patents for which Codexis’ license terminates pursuant to Sections 9.2.3(b), 12.2,
12.3 and/or 12.4 below.




	17.	 	Section 9.2.1 is amended to provide in its entirety, as follows:






          9.2.1 Patent Prosecution.




                    (a) With regard to Patent Applications and Patents within the Product Technology owned
by a Third Party, such Third Party shall have the sole right and discretion to conduct
Patent Prosecution of such Patent Applications and Patents.




                    (b) With regard to Patent Applications and Patents within the Product Technology owned
by MUS, MUS shall have the initial right, but not the obligation, to conduct Patent
Prosecution of such Patent Applications and Patents, unless such Patent Applications and
Patents claim only methods and/or compositions that have substantial, commercially valuable
applications solely within the Codexis Field and/or the Reserved SubFields, in which case
Codexis shall have the right, but not the obligation, to conduct Patent Prosecution of such
Patent Applications and Patents.




	18.	 	Section 9.2.2 is amended to provide in its entirety, as follows:






          9.2.2 Sharing of Prosecution Costs. Codexis shall be responsible for
Prosecution Costs in connection with Patent Prosecution activities described in Section
9.2.1, as follows:




                    (a) With regard to Patent Applications and Patents within the Product Technology owned
by a Third Party, the Third Party and Codexis shall agree on the amounts to be paid by
Codexis to the Third Party with regard to the Patent Prosecution of such Patent Application
and/or Patent. Unless otherwise agreed in writing, Codexis agrees it shall pay a pro rata
share of such Prosecution Costs based on the following formula: Codexis’ percentage share
of such Prosecution Costs = 100 (1/1+X), where X equals the number of sublicenses granted by
MUS with regard to the applicable Patent Application and/or Patent.




               (b) With regard to any Patent Applications and Patents within the Product Technology
that are owned by MUS, if MUS conducts the Patent Prosecution activities described in
Section 9.2.1(b), Codexis shall pay to MUS a pro rata share of such Prosecution Costs based
on the number of sublicenses granted by MUS with regard to the applicable Patent Application
and/or Patent.




               (c) With regard to any Patent Applications and Patents within the Product Technology
that are owned by MUS, if Codexis conducts the Patent Prosecution activities described in
Section 9.2.1(b), Codexis shall pay one hundred




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percent (100%) of the Prosecution Costs
incurred after the Effective Date in connection with such activities.




               (d) Any amounts for Prosecution Costs subject to this Section 9.2.2 for which Codexis
is responsible will be paid by Codexis to the applicable Third Party (or its designee) or to
MUS (or its designee), as applicable, within forty-five (45) days of an invoice therefor.




	19.	 	Section 9.2 is amended by the addition of new Section 9.2.5:






          9.2.5 Opt Out. Notwithstanding Sections 9.2.1 through 9.2.4 above, if Codexis
does not wish to retain rights to any Patent Application or Patent within the Product
Technology, Codexis may, with sixty (60) days written notice to MUS, relinquish its license
rights to such Patent Application and Patent. In such event, Codexis shall have no further
license rights under this Agreement with regard to the applicable Patent Applications and/or
Patents, (i) shall not be entitled to participate in further Patent Prosecution as described
in Section 9.2.2 with respect thereto, and/or further consultation and/or information rights
as described in Section 9.2.4, with regard to such Patent Applications and/or Patents, (ii)
shall have no obligation to pay Prosecution Costs incurred after the effective date of
termination with respect to the applicable Patent Application and/or Patent; (iii) shall
have no further enforcement rights described in Section 10.3 with respect to such Patent
Application and/or Patent. Codexis shall remain obligated to pay its share of any Patent
Prosecution expenses incurred prior to the applicable effective date of termination.




	20.	 	Section 10.3 is amended to provide in its entirety, as follows:






     10.3 Product Technology.




          10.3.1 Infringement in the Codexis Field.




               (a) With regard to any Patent within the Product Technology that is owned by a Third
Party, such Third Party shall have the first right, but not the obligation to enforce such
Patent within the Product Technology against any infringements by Third Parties in the
Codexis Field and/or the Reserved SubFields and defend any declaratory judgment action.




               (b) With regard to any Patent within the Product Technology that is owned by MUS:




                    (i) So long as Codexis retains an exclusive license to the applicable Patent within the
Product Technology and such Patent has applications only in the Codexis Field, Codexis shall
have the first right, but not the obligation, to enforce Patents within the Product
Technology against any infringements by Third Parties in the Codexis Field and defend any
declaratory judgment action. If Codexis fails to initiate a suit to enforce such patent in
any jurisdiction against a commercially significant infringement in the Codexis within one
(1) year of a request by MUS to do so,



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MUS may initiate suit against such infringement, at
its expense. In such event, Codexis agrees to join in such action, if required by
applicable law.




                    (ii) If Codexis does not have an exclusive license to the applicable Patent and/or if
such Patent claims inventions having one or more applications outside the Codexis Field,
then MUS shall have the first right, but not the obligation, to enforce such Patent against
any infringements by Third Parties in the Codexis Field and defend any declaratory judgment
action with respect thereto. If MUS fails to initiate a suit to enforce such Patent in any
jurisdiction against a commercially significant infringement in the MUS Field within one (1)
year of a request by Codexis to do so, Codexis may initiate suit against such infringement,
at its expense. In such event, MUS agrees to join in such action, if required by applicable
law.




               (c) Notwithstanding Section 10.3.1(b) above, Codexis acknowledges that (i) certain
patents within the Product Technology are and will be owned by Third Parties and, that in
some cases, such Third Parties may have retained or may retain the first right, or the sole
right to enforce such patents, and (ii) prior to the Effective Date, MUS has granted to
Third Parties rights to conduct or participate in the enforcement and/or defense of certain
Patent Applications and/or Patents within the Product Technology that are owned by MUS.




          10.3.2 Infringement Outside the Codexis Field.




               (a) With regard to any Patent within the Product Technology that is owned by a Third
Party, such Third Party shall have the first right, but not the obligation, at its sole
expense, to enforce such Patents against any infringements by Third Parties outside the
Codexis Field and/or the Reserved SubFields and defend any declaratory judgment action
relating thereto.




               (b) With regard to any Patent within the Product Technology that is owned by MUS, MUS
(or its designee) shall have the right, but not the obligation, to pursue infringement of
such Patents outside the Codexis Field and the Reserved SubFields, but shall consult with
Codexis before commencing any such suit.




          10.3.3 Recoveries. Any recovery received by a Party hereto as a result of any
claim, suit or proceeding brought pursuant to this Section 10.3 shall be used first to
reimburse the Party(ies), and any involved Third Party, for all expenses (including
attorneys and professional fees) incurred in connection with such claim, suit or proceeding.
Any amounts recovered by a Third Party in a claim, suit or proceeding pursued solely by
such Third Party may be retained by such Third Party. With regard to any other recovery,
after reimbursement as described in the preceding sentence, the remainder shall be divided
as follows: (a) in any suit relating primarily to infringement in the Codexis Field and/or
the Reserved SubFields, seventy percent (70%) to the Party initiating the suit, and thirty
percent (30%) to the other Party, and (b) in any suit primarily relating to infringement
outside the Codexis Field and/or the Reserved SubFields, as MUS determines or as may be
agreed by the Parties in writing.




	21.	 	Section 10.7.3 is revised to read in its entirety, as follows:




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     10.7.3 Codexis Responsibility. If any claim, suit or proceeding subject to
this Section 10.7 is based on allegations relating to the conduct or activities of Codexis
and/or its Sublicensees, unless such claim, suit or proceeding is based solely on an
allegation that the practice of the Enabling Technology infringed a patent owned by a Third
Party, then Codexis shall have the right and responsibility to conduct the defense of such
action, and shall pay the costs of defense of any such action.




	22.	 	Revise Sections 1.31 such that the phrase “within the Codexis Field’ shall be amended to read
“within the Codexis Field, and until the Reserved SubField Termination Date, the Reserved
SubFields”.
	 
	23.	 	Revise Sections 1.32, 1.33, 1.41, 1.53, 2.2.1 and 7.1.3 by adding the phrase “and/or the
Reserved SubFields” after each occurrence of the phrase “in the Codexis Field”.
	 
	24.	 	Revise Sections 2.2.2(f), 2.2.3, 2.5, 2.7.2, 2.8.2, 4.1, 8.1 and 9.2.1 by adding the phrase
“and/or the Reserved SubFields” after each occurrence of the phrase “outside the Codexis
Field”.
	 
	25.	 	Exhibits F and G attached to this Amendment No. 1 shall become exhibits to the Agreement.
	 
	26.	 	Except as expressly provided herein, the terms of the Agreement shall remain in full force
and effect.





[THE REMAINDER OF THIS PAGE HAS BEEN INTENTIONALLY LEFT BLANK]




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     IN WITNESS WHEREOF, MUS and Codexis have executed this Amendment No. 1 to License Agreement as
of the first above written.



	 	 	 	 	 	 	 	 	 	 	 
	MAXYGEN, INC.	 	 	 	CODEXIS, INC.	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	/s/ Russell J. Howard
	 	 	 	By:
	 	/s/ Alan Shaw	 	 
	Name:

	 	 

Russell J. Howard
	 	 	 	Name:
	 	 

Alan Shaw
	 	 
	Title:

	 	Chief Executive Officer
	 	 	 	Title:
	 	President	 	 






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Exhibit F




Scheduled Products





	1.	 	Products for the following petrochemical applications:






Crude Oil Applications


enhancement of recovery of down-hole crude

reduction of metals or sulfur in crude oil & derivatives

reduction of viscosity in crude oil & derivatives





Refinery Applications (for crude oil derivatives)


aromatic/ring-compound removal

sulfur removal

viscosity modification

bio-thepene removal from fuels

conversion of glycerine to glycerine derivatives





	2.	 	Products for the following textile/paper manufacturing applications:




manufacture of dyes/pigments

manufacture of sizing agents

enhanced fiber bio-degradation

enhanced pulping





	3.	 	Products for the following environmental clean-up applications:




soil/water bioremediation (e.g., hydrocarbons/chlorocarbon contamination)

sulfur/CO2 sequestration

radioisotope contamination

nuclear waste processing

treatment (i.e., degradation) of effluent waste products from wood 

product/paper processing

treatment (i.e., degradation) of effluent waste products from grain/oil seed

processing




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Exhibit G




Reserved SubFields





	1.	 	SubField 1: Manufacture of the [****] monomers specified below, for use to make polymers
(excluding polymers for use for [****] and/or [****] applications):






Categories




	 	a.	 	[****]
	 
	 	b.	 	carboxylic acids, as follows: amino carboxylic acids, hydroxy carboxylic
acids, olefinic carboxylates and hydroxy acids
	 
	 	c.	 	[****]
	 
	 	d.	 	[****]
	 
	 	e.	 	[****]






	2.	 	SubField 2: Manufacture of the [****] agents specified below (excluding agents for use for
[****] and/or [****] applications):






Categories




	 	a.	 	[****]
	 
	 	b.	 	[****]
	 
	 	c.	 	[****]
	 
	 	d.	 	[****]






	3.	 	SubField 3: Manufacture of the fuels and fuel additives specified below:






Categories





	 	a.	 	C7-C20 hydroxyalkanes and/or biomass (cellulose) conversion into ethanol
	 
	 	b.	 	bioester fuel oxygenates and/or additives to increase biodegradability of
hydrocarbon fuels
	 
	 	c.	 	production of [****] for use as a [****]






	4.	 	SubField 4: [****], as specified below:






Categories




	 	a.	 	[****]
	 
	 	b.	 	[****]
	 
	 	c.	 	[****]






	5.	 	SubField 5: Manufacture of the following [****], to the extent not covered by SubField 1:






Categories





 




			
	*	 	Certain information on this page has been omitted and filed
separately with the Securities and Exchange Commission. Confidential treatment
has been requested with respect to the omitted portions.




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	 	a.	 	[****]
	 
	 	b.	 	[****]
	 
	 	c.	 	[****]
	 
	 	d.	 	[****]
	 
	 	e.	 	[****]






	6.	 	SubField 6: Manufacture of polymers made from the monomers specified below, for use as
[****] (excluding any use in, on or for [****] or any other [****] and/or [****]
applications):






Categories




	 	a.	 	[****]
	 
	 	b.	 	[****]
	 
	 	c.	 	[****]
	 
	 	d.	 	[****]
	 
	 	f.	 	[****]
	 
	 	g.	 	[****]






	7.	 	SubField 7: Manufacture of the [****] specified below for [****] uses (excluding any use in,
on or for [****] or any other [****] and/or [****] applications):






Categories




	 	a.	 	[****]
	 
	 	b.	 	[****]
	 
	 	c.	 	[****]
	 
	 	d.	 	[****]
	 
	 	e.	 	[****]







 




			
	*	 	Certain information on this page has been omitted and filed
separately with the Securities and Exchange Commission. Confidential treatment
has been requested with respect to the omitted portions.






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