Exhibit 10.1


LICENSE AGREEMENT


This License Agreement (the “Agreement”), effective as
of October 27, 2006 (the “Effective Date”), is entered into by and between Valentis,
Inc., a Delaware corporation having offices at 863A Mitten Road, Burlingame,
California 94010 (“Valentis”) and Juvaris BioTherapeutics, Inc., a Delaware
corporation having offices at 6200 Stoneridge Mall Road, Suite 3F, Pleasanton,
CA 94588 (“Juvaris”).  All references to Valentis
and Juvaris in this Agreement shall include their Affiliates (as defined
below).


BACKGROUND


A.            Valentis
is the owner or exclusive licensee of certain Patent Rights and Know-How (as
such terms are defined below), and Juvaris wishes to acquire a license under
the Patent Rights and Know-How; and


B.            Valentis
is willing to grant Juvaris such a license, on the terms and conditions set
forth below.


NOW, THEREFORE, in consideration of the promises and
the mutual covenants hereinafter recited, the parties agree as follows:


ARTICLE 1.



DEFINITIONS


In this Agreement, the following terms shall have the
meanings set forth in this Article.


1.1           “Affiliate”
means any company, corporation, division or other entity which is directly or
indirectly controlling, controlled by or under common control with a party
hereto.  For the purpose of this
Agreement, with respect to any company, corporation, division or other entity, “control”
shall mean the direct or indirect ownership of at least fifty percent (50%) of
the outstanding shares or other voting rights of the subject company, corporation
or other entity to elect directors.


1.2           “Confidential
Information” means (a) any proprietary or confidential information
or material in tangible form disclosed hereunder that is marked as “Confidential”
at the time it is delivered to the receiving party, or (b) proprietary or
confidential information disclosed orally hereunder which is identified as
confidential or proprietary when disclosed and such disclosure of confidential
information is confirmed in writing within thirty (30) days by the disclosing party.


1.3           “Know-How”
means unpatented and/or unpatentable technical information, including ideas,
concepts, inventions, discoveries, data, designs, formulas, specifications,
procedures for experiments and tests and other protocols, results of
experimentation and testing, fermentation and purification techniques, and
assay protocols owned by Valentis as of the Effective Date which may be
necessary for the practice of the Patent 









 



 


Rights solely as contemplated hereunder.  Know-How shall not include the Patent
Rights.  All Know-How shall be
Confidential Information of Valentis.


1.4           “Juvaris Customer”
means any person or entity (a) for whom Juvaris, pursuant to a written
agreement, undertakes Process Development and (b) who otherwise abides by the
requirements of Section 2.3.


1.5           “Juvaris Partner”
means an entity with whom Juvaris, pursuant to a written agreement and a bona
fide collaboration or license of rights, shares substantial cost and economic
risk of the development, commercialization or marketing of a Juvaris Product.


1.6           “Juvaris Expression
Materials” means those compositions of matter or articles of
manufacture created by Juvaris that are suitable for the manufacture of a
polynucleotide.


1.7           “Juvaris Products”
means any product or material resulting from the use of the Licensed Technology
by or on behalf of: (i) Juvaris; or (ii) Juvaris Customers or Juvaris Partners
that are sublicensees of Juvaris under such Licensed Technology pursuant to the
terms of Article 2.


1.8           “Licensed Technology”
means the Patent Rights and the Know-How.


1.9           “Patent Rights”
means the patent applications and patents listed on Schedule 1.9 hereto
and, to the extent covered by the transfer of rights pursuant to this
Agreement, patent applications and patents owned or controlled by Valentis
covering improvements made by Juvaris to the technology disclosed in the patent
applications and patents listed on Schedule 1.9, and all divisions,
continuations, continuations-in-part, and substitutions thereof, all foreign
patent applications corresponding to the preceding applications; and all U.S.
and foreign patents issuing on any of the preceding applications, including
extensions, reissues, and reexaminations.


1.10         “Process Development”
means, when undertaken by Juvaris on behalf of a Juvaris Customer, as
applicable, using, making, having made or importing the methods, compositions
of matter or articles of manufacture embodied by the Patent Rights or the
Know-How, but only as it directly relates to those activities customarily
associated with or reasonably necessary for the development of manufacturing or
scale-up processes reasonably required for the commercial or clinical
production of a plasmid DNA product, including for example preclinical studies,
GLP toxicology studies and other activities to support an IND filing, and
clinical trials; provided, however, that, notwithstanding anything to the
contrary, production of material for use in a clinical study, such as, for
example, a Phase IIb clinical trial, that was not intended to be a pivotal
trial but is determined later to be suitable to qualify as a pivotal trial will
be deemed to be Process Development.


1.11         “Third Party”
means any person or entity other than Juvaris or Valentis.



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ARTICLE 2.



LICENSE


2.1           Grant to Juvaris.  Subject to the terms and conditions of this
Agreement, Valentis hereby grants to Juvaris for the sum of two hundred
thousand dollars ($200,000) payable on or before the one year anniversary of
the Effective Date, a non-exclusive, non-transferable (except as provided for
in this Article 2 and Section 9.2 below), worldwide, royalty-free, fully paid
up license under the Licensed Technology, with the right to grant sublicenses
to Juvaris Customers and Juvaris Partners, to:


(a)           make, have made, use, sell, offer for sale, export and
import Juvaris Products;


(b)           engage in Process Development for Juvaris Customers;


(c)           transfer to a Juvaris Customer in exchange for
consideration any Juvaris Expression Materials encoding such Juvaris Customer’s
product; and


(d)           make, have made, use, sell, offer for sale, export and
import any Juvaris Product for the benefit of a Customer, in exchange for
consideration, at a facility designated by Juvaris.


2.2           Grant to Juvaris
Customers.  Subject to the
terms and conditions of this Agreement, Valentis hereby grants to Juvaris a
right to grant to each Juvaris Customer who abides by the conditions of Section
2.3, a non-exclusive, non-transferable, worldwide license under the Licensed
Technology, with the right to grant sublicenses to contract manufacturers
solely for the production of the Juvaris Customer’s products, to:


(a)           have Juvaris, on behalf of and for the benefit of such Juvaris
Customer, make, have made, use, export and import Juvaris Expression Materials
encoding any such Juvaris Customer’s product;


(b)           have Juvaris, on behalf of and for the benefit of such Juvaris
Customer, undertake Process Development with respect to any such Juvaris
Customer’s product;


(c)           have Juvaris make, on behalf of and for the benefit of
such Juvaris Customer and at a facility designated by Juvaris any Juvaris Product
using Juvaris Expression Materials;


(d)           have a contract manufacturer who is otherwise licensed by Valentis,
under the terms of the applicable license agreement, make any Juvaris Product
using Juvaris Expression Materials; and


(e)           use, export and import, and sell, any Juvaris Product made
by Juvaris or a contract manufacturer in accordance with the license grants of
this Agreement.



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(f)            Juvaris agrees to generate and maintain a comprehensive
list (“Customer Contact List”) containing the name and address (and individual
to contact, if appropriate) of each Juvaris Customer or entity or person on
whose behalf it engages in Process Development. 
As additional Juvaris Customers are identified and when activities are
initiated by Juvaris on behalf of any such Juvaris Customer, Juvaris shall
update the Customer Contact List.  Juvaris
shall use reasonable commercial efforts to obtain the right in each and every
agreement entered into with a Juvaris Customer to disclose to Valentis such Juvaris
Customer’s name and address (and individual to contact, if appropriate).  To the full extent that Juvaris is able
without violating the terms of an agreement between Juvaris and a Juvaris
Customer, Juvaris shall provide the Customer Contact List to Valentis within
forty-five (45) days after the end of each calendar year.  The Customer Contact List shall be
Confidential Information of Juvaris, and Valentis shall keep such list, and
information contained in such list, strictly confidential; provided,
however, that Valentis’s obligations of confidentiality shall not
prohibit Valentis’s use of the information contained in the Customer Contact
List for purposes of identifying and prosecuting potential infringement of the
Patent Rights or misappropriation of the Know-How.  Except as otherwise set forth in the previous
sentence, Valentis’s obligations of confidentiality with respect to the
Customer Contact List shall be subject to the terms of Article 5 of this
Agreement.


2.3           No Implied Rights.  Only the licenses granted pursuant to the
express terms of this Agreement shall be of any legal force or effect.  No other license rights shall be granted or
created by implication, estoppel or otherwise. 
For the avoidance of doubt, by example only and without expanding or
narrowing the license grants of Sections 2.1 and 2.2, the grants of rights made
pursuant to Sections 2.1 and 2.2 do not include, and expressly exclude, any
right or license (a) to engage in any activities on behalf of or in collaboration
with any Third Party (other than as expressly set forth herein), or (b) to
release or waive any claim of infringement under any patent or patent
application owned or controlled by Valentis or its Affiliates, including,
without limitation, the Patent Rights.


2.4           Ownership; Enforcement;
No Challenge.


(a)           At all times, Valentis will retain ownership of the
Licensed Technology, including all embodiments of the Patent Rights or the
Know-How, that in each case is owned by Valentis as of the Effective Date, and
any improvements made by Valentis thereof, and nothing herein shall be
construed to limit Valentis’ right to freely use and commercialize such
Licensed Technology itself or with Third Parties.  Valentis retains the right, at its sole
discretion, to enforce, maintain and otherwise protect the Licensed
Technology.  Juvaris shall give Valentis
notice of any infringement by a Third Party of any Patent Rights owned or
controlled by Valentis or misappropriation of the Know-How which comes to Juvaris’
actual knowledge during the term of this Agreement.  Juvaris will cooperate on a commercially
reasonable basis with Valentis with respect to any actions Valentis may choose
to take pursuant to this Section 2.4, and Valentis will reimburse Juvaris for
its reasonable costs in this regard.


(b)           Except as required under applicable law, Juvaris shall not
participate, directly or indirectly, in any opposition or challenge to the
validity or enforceability of any Patent Right in any forum and Juvaris shall
not assist any Third Party in any such participation.  Any breach by Juvaris of this Section 2.4(b)
shall constitute a material breach of 



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this Agreement and any licenses or rights granted
hereunder may, at Valentis’s option, be terminable.


2.5           Reports, Records and
Audits.


(a)           Juvaris shall use reasonable commercial efforts to obtain
the right in each and every agreement entered into with a Juvaris Customer to
disclose to Valentis the activities, compositions of matter or articles of
manufacture made or undertaken by Juvaris for the benefit of such Juvaris
Customer.  Within forty-five (45) days
after the end of each calendar year, commencing with the first calendar year
after the Effective Date, Juvaris, unless in violation of the terms of an
agreement between Juvaris and a Juvaris Customer, shall deliver to Valentis a
written report which specifies with reasonable detail the activities,
compositions of matter or articles of manufacture made or undertaken by Juvaris
that are subject to this Agreement, including, without limitation, any Process
Development as to which Juvaris claims the benefit of the license grant of
Section 2.1.  The reports delivered by Juvaris
to Valentis pursuant to this Section 2.5(a) shall be Confidential Information
of Juvaris.


(b)           Juvaris shall maintain records fully and properly
reflecting those activities to be reported to Valentis pursuant to Section 2.5(a)
(the “Records”) in sufficient detail and in good scientific manner appropriate
for patent, regulatory and manufacturing purposes for at least three (3) years
after the date of delivery of the report containing such information.  Upon the written request of Valentis and not
more than once in each calendar year, Juvaris shall permit an independent third
party, selected by Valentis and reasonably acceptable to Juvaris, at Valentis’
expense, to have access during normal business hours to such of the Records of Juvaris
as may be reasonably necessary to verify compliance with the terms of this
Agreement, as well as the accuracy of the reports hereunder; provided, however,
that Juvaris shall not be obligated to disclose any information in such Records
to the extent such disclosure would violate the terms of an agreement between
Juvaris and a Juvaris Customer.  Juvaris
shall certify any statements by Juvaris personnel as to their accuracy and
correctness.


ARTICLE 3.



IMPROVEMENTS


Valentis shall be free to research, develop and patent
any improvements made by Valentis to the Licensed Technology and, except as
expressly set forth herein, no rights shall be or are to be construed as granted
under this Agreement to Juvaris to any patents or patent applications (other
than the Patent Rights) arising from such activities.


ARTICLE 4.



REPORTS AND RECORDS


4.1           Reports.  Juvaris shall make a written report to Valentis
within thirty (30) days after each anniversary of the Effective Date describing
Juvaris’ activities under the rights granted to Juvaris pursuant to Section 2.1.  Each such report shall also contain a written




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certification that Juvaris is in material compliance
with all relevant terms and conditions of this Agreement.  Valentis shall treat all such reports as
Confidential Information of Juvaris.


4.2           Records.  Juvaris shall, and shall cause any Juvaris
Customer to use reasonable efforts to, keep complete, true and accurate books
of account and records for the purpose of determining compliance with this
Agreement.


ARTICLE 5.



CONFIDENTIALITY


5.1           Confidential Information.  Except as expressly provided herein, the
parties agree that, for the term of this Agreement and for five (5) years
thereafter, the receiving party shall keep confidential and shall not publish
or otherwise disclose, and shall not use for any purpose except for the
purposes contemplated by this Agreement, any Confidential Information furnished
to such receiving party by a disclosing party hereto, except to the extent that
it can be established by the receiving party by written proof that such
Confidential Information:


(a)           was already known to the receiving party, other than under
an obligation of confidentiality to the disclosing party, at the time of
disclosure;


(b)           was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the receiving party;


(c)           became generally available to the public or otherwise part
of the public domain after its disclosure other than through any act or
omission of the receiving party in breach of this Agreement; or


(d)           was subsequently disclosed to the receiving party by a
person or entity with no obligation to the disclosing party with respect to
such information.


5.2           Permitted Use and
Disclosures.  Each party
hereto may use or disclose information disclosed to it by the other party to
the extent such use or disclosure is reasonably necessary for the purposes contemplated
by this Agreement, and in such case pursuant to a confidentiality agreement no
less restrictive than the terms set forth in this Article 5, or in complying
with applicable law or government regulations; provided, however, that if a party is required to make any such
disclosure of the other party’s Confidential Information, other than pursuant
to such a confidentiality agreement, it will give reasonable advance notice to
such other party of such disclosure. 
Notwithstanding anything herein to the contrary, Juvaris shall be free
to disclose the Licensed Technology to the extent such disclosure is required
in its filings with regulatory and patent authorities.


5.3           Confidential Terms.  Except as expressly provided herein, each
party agrees that the terms of this Agreement and the transaction and
relationship with each other constitute Confidential Information and are not to
be disclosed to any Third Party without the consent of the other party; provided that disclosures may be made as required by securities
or 



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other applicable laws, or to a party’s accountants,
attorneys and other professional advisors, and potential partners and investors.


5.4           Existence of Agreement.  The parties hereby agree that the
consummation of this Agreement, but not any of the terms hereof, except as
otherwise permitted pursuant to Section 5.3, shall be deemed to be in the
public domain and may be announced or otherwise referred to by a party as
deemed appropriate.


ARTICLE 6.



REPRESENTATIONS AND WARRANTIES


6.1           Representations and
Warranties.


(a)           Valentis represents and warrants that:  (i) it is the sole and exclusive owner or
exclusive licensee of all right, title and interest in the Licensed Technology;
(ii) it has the legal right, authority and power to enter into this Agreement,
and to grant the licenses granted herein; (iii) it has not previously granted
and will not grant any rights in the Licensed Technology that conflict with the
rights and licenses granted to Juvaris herein; (iv) this Agreement shall
constitute a valid and binding obligation of Valentis enforceable in accordance
with its terms; and (v) the performance of its obligations under this Agreement
by Valentis shall not result in a breach of any agreement, contract or other
arrangement to which it is a party.


(b)           Juvaris represents and warrants that: (i) it has the legal
right, authority and power to enter into this Agreement; (ii) this Agreement
shall constitute a valid and binding obligation of Juvaris enforceable in
accordance with its terms; and (iii) the performance of its obligations under
this Agreement by Juvaris shall not result in a breach of any agreement,
contract or other arrangement to which it is a party.


6.2           Disclaimer.  Nothing in this Agreement is or shall be
construed as:


(a)           A warranty or representation by Valentis as to the
validity or scope of any claim or patent within the Patent Rights;


(b)           A warranty or representation by Valentis that anything
made, used, sold, or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of any patent rights or other
intellectual property right of any Third Party;


(c)           An obligation to bring or prosecute actions or suits
against Third Parties for infringement of any of the Patent Rights; or


(d)           Granting by implication, estoppel, or otherwise any
licenses or rights under patents or other rights of Valentis or Third Parties,
regardless of whether such patents or other rights are dominant or subordinate
to any patent within the Patent Rights.


(e)           An obligation by Valentis to maintain
any of the patent applications and patents listed on Schedule 1.9 hereto.



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6.3           No Warranties.  EXCEPT FOR THE EXPRESS WARRANTIES SET FORTH
IN SECTION 6.1, NEITHER PARTY GRANTS ANY WARRANTY, EXPRESS OR IMPLIED, EITHER
IN FACT OR BY OPERATION OF LAW, BY STATUTE OR OTHERWISE, AND EACH PARTY
SPECIFICALLY DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTY OF TITLE, MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, OR NON-INFRINGEMENT OF THE INTELLECTUAL
PROPERTY RIGHTS OF ANY THIRD PARTY.


ARTICLE 7.



INDEMNIFICATION


7.1           Juvaris agrees to indemnify, defend and hold Valentis and
its directors, officers, shareholders, employees, contractors and agents (each,
an “Indemnitee”) harmless from and against any and all liabilities, claims,
demands, expenses (including, without limitation, attorneys and professional
fees and other costs of litigation), losses or causes of action brought by
Third Parties (each, whether by a Juvaris Partner or a Juvaris Customer, a “Liability”)
arising out of (i) the possession, manufacture, use, sale or other disposition
of Juvaris Products or the provision of Process Development, whether based on
breach of warranty, negligence, product liability or otherwise; (ii) the use by
Juvaris or Juvaris’ Customers of the Licensed Technology licensed hereunder; (iii)
any breach of a warranty, representation or covenant granted to Valentis
hereunder; or (iv) the exercise of any right granted to Juvaris or a Juvaris
Customer pursuant to this Agreement; except, in each case, to the extent due to
(a) an Indemnitee’s negligence or willful misconduct or violation of applicable
laws or breach of its representations and warranties made in Article 6 above or
(b) the infringement of the Licensed Technology on the intellectual property
rights of third parties, but only to the extent such infringement is due to the
Licensed Technology in the form provided by Valentis and not due to any
modifications made to such Licensed Technology by Juvaris or any Juvaris
Partners or Juvaris Customers.


7.2           An Indemnitee that intends to claim indemnification under
this Article 7 shall (i) promptly notify Juvaris in writing of any
Liability with respect to which the Indemnitee intends to claim such
indemnification, (ii) give Juvaris sole control of the defense and/or
settlement thereof, and (iii) provide Juvaris, at Juvaris’ expense, with
reasonable assistance and full information with respect to such Liability.  Juvaris shall not settle any claim, suit or
proceeding subject to this Article 7 or otherwise consent to an adverse judgment
in such claim, suit or proceeding if the same materially diminishes the rights
or interests of the Indemnitee without the express written consent of the
Indemnitee.  Notwithstanding the
foregoing, Juvaris shall have no obligations for any Liability if the
Indemnitee seeking indemnification makes any admission, settlement or other
communication regarding such Liability without the prior written consent of
Juvaris, which consent shall not be unreasonably withheld.



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ARTICLE 8.



TERM AND TERMINATION


8.1           Term.  The term of this Agreement will commence on
the Effective Date and remain in full force and effect until the expiration of
the last of the Patents, unless earlier terminated in accordance with this
Article 8.  If this Agreement has not
been terminated earlier in accordance with this Article 8, upon the expiration
of the Patents, all licenses to the Know-How granted in Article 2 shall become
fully paid-up, royalty free, perpetual and irrevocable.


8.2           Termination for Cause.


(a)           Either party may terminate this Agreement in the event the
other party has materially breached or defaulted in the performance of any of
its obligations hereunder, and such default has continued for thirty (30) days
after written notice thereof was provided to the breaching party by the
non-breaching party.  Any termination
shall become effective at the end of such thirty (30) day period unless the
breaching party has cured any such breach or default prior to the expiration of
such period.  Notwithstanding the
foregoing, if the party alleged to be in breach of this Agreement disputes such
breach by written notice to the other party within such thirty (30) day period,
the non-breaching party shall not have the right to terminate this Agreement
unless it has been determined that this Agreement was materially breached in
accordance with Section 9.12 below, and the breaching party fails to comply
with its obligations hereunder within thirty (30) days after such
determination.  Any such breach or
default by Juvaris alone shall not affect any sublicense granted to a Juvaris
Customer alone shall not affect the rights granted hereunder to any other Juvaris
Customer.


(b)           In the event a Juvaris Customer has materially breached or
defaulted in the performance of any of its obligations hereunder, Valentis may
require Juvaris to terminate, and Juvaris will terminate, any license granted
by Juvaris to such Juvaris Customer pursuant to Section 2.2, provided that such
default has continued for thirty (30) days after written notice thereof was
provided to the breaching party by Juvaris. 
Any termination shall become effective at the end of such thirty (30)
day period unless the breaching party has cured any such breach or default
prior to the expiration of such period. 
Any such breach or default by a Juvaris Customer alone, shall not affect
Juvaris or its related obligations, and any such breach or default by a Juvaris
Customer alone shall not affect the rights granted hereunder to any other Juvaris
Customer.


8.3           Termination for
Insolvency.  If voluntary or
involuntary proceedings by or against a party are instituted in bankruptcy
under any insolvency law, or a receiver or custodian is appointed for such
party, or proceedings are instituted by or against such party for corporate
reorganization or the dissolution of such party, which proceedings, if
involuntary, shall not have been dismissed within sixty (60) days after the
date of filing, or if such party makes an assignment for the benefit of
creditors, or substantially all of the assets of such party are seized or
attached and not released within sixty (60) days thereafter, the other party,
to the extent permitted under applicable law, may immediately terminate this
Agreement effective upon notice of such termination.


8.4           Termination by Juvaris.  Juvaris may terminate this Agreement for any
business reason upon thirty (30) days prior written notice to Valentis.  For clarity, any such termination by Juvaris
under this Section 8.4 shall not relieve Juvaris of its obligation to pay to
Valentis the amount set forth in Section 2.1 above on the date set forth
therein.



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8.5           Effect of Termination.


(a)           Accrued Rights and
Obligations.  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.  It is understood and agreed
that monetary damages may not be a sufficient remedy for any breach of this
Agreement and that the nonbreaching party may be entitled to injunctive relief
as a remedy for any such breach. Such remedy shall not be deemed to be the
exclusive remedy for any such breach of this Agreement, but shall be in
addition to all other remedies available at law or in equity.


(b)           Return of Confidential
Information.  Upon any
termination of this Agreement, Juvaris and Valentis shall promptly return to
the other party all Confidential Information, including without limitation, any
know-how received from the other party (except Valentis may retain copies of
any reports or records furnished pursuant to Articles 2 and 4).


(c)           Licenses.  Except as expressly provided in this Article 8,
all licenses granted hereunder shall terminate upon the termination of this
Agreement.


8.6           Survival.  Sections 2.6, 7.3, 8.4 and 8.5, Articles 1, 5,
7, and 9 of this Agreement shall survive the expiration or termination of this
Agreement for any reason.  Any
sublicenses granted by Juvaris under and in accordance with the terms of
Article 2 shall survive any termination of this Agreement.


ARTICLE 9.


MISCELLANEOUS PROVISIONS


9.1           Governing Laws.  This Agreement and any dispute, including
without limitation any arbitration, arising from the performance or breach
hereof shall be governed by and construed and enforced in accordance with the
laws of the state of California, without reference to conflicts of laws principles.


9.2           Assignment.  Neither party may transfer or assign this
Agreement, directly or indirectly, or any of its rights hereunder without the
prior written consent, which shall not be reasonably withheld, of the other
party, other than (a) to one or more Affiliates, or (b) to a successor in
connection with the transfer or sale of all or substantially all of its
business relating to the subject matter of this Agreement.  Any attempted transfer or assignment in violation
of this Section 9.2 shall be void; provided:


(a)           Valentis shall have the right to terminate this Agreement
immediately in the event of a change of control or assignment by Juvaris to a
Third Party Potential Infringer, provided that Valentis, prior to such change
of control or assignment, has provided an accurate and updated list of Third
Party Infringers to Juvaris and provided further that, in the event of such
termination, such Third Party Potential Infringer receiving control of 



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Juvaris or assignment by Juvaris of this Agreement
shall have the right to continue practicing the rights and licenses granted
hereunder, but only with respect to the Juvaris Products under development
and/or commercialization at the time of such assignment by Juvaris that are the
subject of the assignment to such Third Party. 
Notwithstanding anything herein to the contrary, in the event that a
Third Party Potential Infringer receives assignment of this Agreement, such
assignment shall in no way be a waiver by Valentis of any pre-existing claim
for infringement of the Licensed Technology that Valentis may have against such
Third Party Potential Infringer prior to such assignment or grant of any
license by Valentis to such Third Party Potential Infringer under the Licensed
Technology, except for the rights and licenses to develop and commercialize
Juvaris Products expressly granted in the foregoing sentence.  As used herein, a “Third Party Potential Infringer”
shall mean an entity or person against whom Valentis had filed an
action for the infringement of the Licensed Technology and/or is then engaged
in active licensing discussions with Valentis with respect to the Licensed
Technology, in each case prior to a change of control or assignment by Juvaris
to such entity, and whom was previously identified by Valentis to Juvaris as a
Third Party Potential Infringer.


(b)           In the event of a permitted acquisition of all or
substantially all of a party’s assets relating to the subject matter of this
Agreement, the original party’s (or its successor’s) obligations hereunder, including
the obligation to make payment under Section 2.1 above, shall continue.  This Agreement shall be binding upon and
inure to the benefit of the parties and their permitted successors and assigns.


9.3           Waiver.  No waiver of any rights shall be effective
unless consented to in writing by the party to be charged and the waiver of any
breach or default shall not constitute a waiver of any other right hereunder or
any subsequent breach or default.


9.4           Severability.  In the event that any provisions of this
Agreement are determined to be invalid or unenforceable by a court of competent
jurisdiction, the remainder of the Agreement shall remain in full force and
effect without said provision.


9.5           Notices.  All notices, requests and other
communications hereunder shall be in writing and shall be delivered or sent in
each case to the respective address specified below, or such other address as
may be specified in writing to the other party hereto, and shall be effective
on receipt:


	
   

  	
  If to VALENTIS:

  
	
   

  	
   

  
	
   

  	
  Valentis, Inc.

  
	
   

  	
  863A Mitten Road

  
	
   

  	
  Burlingame, California 94010

  
	
   

  	
  Attn:

  	
  Benjamin F. McGraw, III, Pharm. D.

  
	
   

  	
   

  	
  President and
  Chief Executive Officer

  
	
   

  	
   

  	
   

  
	
   

  	
  with a copy
  (which shall not constitute notice) to:

  
	
   

  	
   

  
	
   

  	
  Liner Yankelevitz Sunshine & Regenstreif LLP

  
	
   

  	
  199 Fremont St,
  20th Floor

  




 11
 






 



 


	
  

  	
  San Francisco, Ca 94105

  
	
   

  	
  Attn: Gregory
  Alan Rutchik, Esq.

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  If to JUVARIS:

  
	
   

  	
   

  
	
   

  	
  Juvaris
  Biotherapeutics, Inc.

  
	
   

  	
  6200 Stoneridge
  Mall Road, 3F

  
	
   

  	
  Pleasanton, CA
  94588

  
	
   

  	
  Attn: President/CEO

  
	
   

  	
  Fax:
  925-399-6100

  
	
   

  	
   

  
	
   

  	
  with a copy
  (which shall not constitute notice) to:

  
	
   

  	
   

  
	
   

  	
  Wilson Sonsini
  Goodrich & Rosati P.C.

  
	
   

  	
  12235 El Camino
  Real, Suite 200

  
	
   

  	
  San Diego, CA
  92130

  
	
   

  	
  Attn: Technology
  Transactions

  
	
   

  	
   

  
	
   

  	
   

  



9.6           Independent Contractors.  Both parties are independent contractors
under this Agreement.  Nothing contained
in this Agreement is intended nor is to be construed so as to constitute Valentis
or Juvaris as partners or joint venturers with respect to this Agreement.  Except as expressly provided herein, neither
party shall have any express or implied right or authority to assume or create
any obligations on behalf of or in the name of the other party or to bind the
other party to any other contract, agreement, or undertaking with any Third
Party.


9.7           Compliance with Laws.  In exercising their rights under this
license, the parties shall comply in all material respects with the
requirements of any and all applicable laws, regulations, rules and orders of
any governmental body having jurisdiction over the exercise of rights under
this Agreement. Juvaris shall, with respect to the Patent Rights, abide by all
applicable patent marking statutes and, as advised by its own counsel, mark any
Juvaris Products accordingly.


9.8           Bankruptcy.  All rights and licenses granted under or
pursuant to this Agreement by Valentis to Juvaris, for all purposes of Section
365(n) of Title XI of the United States Code (“Title XI”), licenses of
rights to “intellectual property” as defined in Title XI.  During the term of this Agreement Valentis
shall create and maintain current copies to the extent practicable of all
Licensed Technology.  If a bankruptcy
proceeding is commenced by or against Valentis under Title XI, Juvaris shall be
entitled to a copy of any and all such intellectual property and all
embodiments of such intellectual property, and the same, if not in the
possession of Juvaris, shall be promptly delivered to it (a) upon Juvaris’
written request following the commencement of such bankruptcy proceeding,
unless Valentis, or its trustee or receiver, elects within thirty (30) days to
continue to perform all of its obligations under this Agreement, or (b) if not
delivered as provided under clause (a) above, upon Juvaris’ request following
the rejection of this Agreement by or on behalf of Valentis.  If Juvaris has taken possession of all
applicable 



 12
 






 



 


embodiments of the intellectual property of Valentis
pursuant to this Section 9.8 and the trustee in bankruptcy of Valentis does not
reject this Agreement, Juvaris shall return such embodiments upon request.  If Valentis seeks or involuntarily is placed
under Title XI and the trustee rejects this Agreement as contemplated under 11
U.S.C. 365(n)(1), Juvaris hereby elects, pursuant to Section 365(n) of Title
XI, to retain all rights granted to it under this Agreement to the extent
permitted by law.


9.9           Use of Names.  Neither party shall use the name or
trademarks of the other party, except to the extent that a party is permitted
to use the Confidential Information of the other party pursuant to Article 5,
without the prior written consent of such other party.


9.10         Further Actions.  Each party agrees to execute, acknowledge and
deliver such further instruments, and do such other acts, as may be necessary
and appropriate in order to carry out the purposes and intent of this
Agreement.


9.11         Limitation of Liability.  IN NO EVENT WILL EITHER PARTY BE LIABLE FOR
ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL OR INDIRECT DAMAGES ARISING IN ANY WAY
OUT OF THIS AGREEMENT, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY.  THIS LIMITATION WILL APPLY EVEN IF THE OTHER
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE AND NOTWITHSTANDING
ANY FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED WARRANTY PROVIDED HEREIN.


9.12         Arbitration.


(a)           Solely with respect to any dispute between the parties to
this Agreement (other than any dispute which arises out of or relates to
infringement, validity and/or enforceability of the Patent Rights) upon ten
(10) days written notice, any party involved in the dispute may initiate
arbitration by giving notice to that effect to the other party or parties
involved in the dispute and by filing the notice with the American Arbitration
Association or its successor organization (“AAA”) in accordance with its
Commercial Arbitration Rules.  Such
dispute shall then be settled by arbitration in San Mateo County, in accordance
with the Commercial Arbitration Rules of the AAA or other rules agreed to by
the parties involved in the dispute, by a panel of one neutral arbitrator, who
shall be selected by the parties involved in the dispute using the procedures
for arbitrator selection of the AAA.


(b)           The parties acknowledge that this Agreement evidences a
transaction involving interstate commerce. Insofar as it applies, the United
States Arbitration Act shall govern the interpretation of, enforcement of, and
proceedings pursuant to the arbitration clause in this Agreement.  Except insofar as the United States
Arbitration Act applies to such matters, the agreement to arbitrate set forth
in this Section 9.12 shall be construed, and the legal relations among the
parties shall be determined in accordance with, the substantive laws of the
State of California.


(c)           The arbitrator shall render its decision and award,
including a statement of reasons upon which such award is based, within thirty
(30) days after the arbitration hearing. 
The decision shall be in writing and shall be binding upon the parties
involved in the 



 13
 






 



 


dispute, final and non-appealable. Judgment upon the
award rendered by the panel may be entered in any court having jurisdiction
thereof in accordance with Section 9.13(a).


(d)           Except as provided under the United States Arbitration Act
and with respect to the infringement, validity and/or enforceability of the
Patent Rights, no action at law or in equity based upon any dispute that is
subject to arbitration under this Section 9.12 shall be instituted.


(e)           All expenses of any arbitration pursuant to this Section 9.12,
including fees and expenses of the parties’ attorneys, fees and expenses of the
arbitrators, and fees and expenses of any witness or the cost of any proof
produced at the request of the arbitrators, shall be paid by the non-prevailing
party.


9.13         Venue; Jurisdiction.


(a)           Any action or proceeding brought by either party seeking
to enforce any provision of, or based on any right arising out of, this
Agreement may be brought against any of the parties in the courts of the State
of California, county of San Mateo . 
Each party hereby irrevocably submits to the jurisdiction of the state
courts of the State of California and the country of San Mateo and to the
jurisdiction of any United States District Court in the State of California,
county of San Mateo, for the purpose of any suit, action, or other proceeding
arising out of or based upon this Agreement or the subject matter hereof
brought by any party or its successors or assigns.


(b)           Process in any action or proceeding seeking to enforce any
provision of, or based on any right arising out of, this Agreement may be
served on any party by registered mail at the address to which notices are to
be given pursuant to Section 9.5. 
Nothing herein shall affect the right of a party to serve process in any
other manner permitted by applicable law. 
Each party further agrees that final judgment against it in any such
action or proceeding arising out of or relating to this Agreement shall be
conclusive and may be enforced in any other jurisdiction within or outside the
United States of America by suit on the judgment, a certified or exemplified
copy of which shall be conclusive evidence of the fact and of the amount of its
liability.


(c)           Each party agrees that it shall not, and that it shall
instruct those in its control not to, take any action to frustrate or prevent
the enforcement of any writ, decree, final judgment, award (arbitral or
otherwise) or order entered against it with respect to this Agreement or the
Patent Rights and shall agree to be bound thereby as if issued or executed by a
competent judicial tribunal having personal jurisdiction situated in its
country of residence or domicile.


9.14         Entire Agreement;
Amendment.  This Agreement
constitutes the entire and exclusive Agreement between the parties with respect
to the subject matter hereof and supersedes and cancels all previous
discussions, agreements, commitments and writings in respect thereof.  No amendment or addition to this Agreement
shall be effective unless reduced to writing and executed by the authorized
representatives of the parties.



 14
 






 



 


9.15         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.



 15
 






 



 


IN WITNESS WHEREOF, Valentis and Juvaris have executed
this Agreement in duplicate originals by duly authorized officers.




	
  VALENTIS , INC.

  	
  JUVARIS BIOTHERAPEUTICS, INC

  
	
   

  	
   

  	
   

  
	
  By:

  	
  /s/ John J. Reddington

  	
   

  	
  By:

  	
  /s/ Martin Cleary

  
	
   

  	
  Name: John J. Reddington

  	
   

  	
   

  	
  Name: Martin Cleary

  
	
   

  	
  Title: Chief Operating Officer

  	
   

  	
   

  	
  Title: President and Chief Executive Officer

  
	
   

  	
   

  	
   

  






 



 16















 


SCHEDULE 1.9


PATENT RIGHTS


 


	
  Family

  	
   

  	
  Title

  	
   

  	
  Number

  	
   

  	
  Filed/Priority Date

  
	
  1

  	
   

  	
  Methods for Purifying Nucleic
  Acids (Tangential Flow Ultrafiltration/Diafiltration
  [UF/DF] for plasmid purification)

  	
   

  	
  US6,011,148
WO98/05673

  EP0923592B1

  AU717136B2

  CA2261150C

  JP3492702B2

  	
   

  	
  filed 1996-08-01

  
	
  2

  	
   

  	
  Methods
  for Purifying Nucleic Acids (Purification protocol
  including static mixing for lysis, TMAE anion exchange chromatography and
  UF/DF for plasmid purification)

  	
   

  	
  WO00/05358
US09/121,798

  (US Pub. No. 2002/0198372A1)

  EP1098966A1

  AU48638/99A1

  CA2338397AA

  JP2002-521029,A

  (unexamined publication no.)

  	
   

  	
  PCT
  filed 1999-07-07,

  claiming priority to 1998-07-23

  
	
  3

  	
   

  	
  Process
  and Equipment for Plasmid Purification (TMAE anion exchange
  and/or hydrophobic interaction chromatography (HIC) for plasmid purification)

  	
   

  	
  US7,026,468 (issuing
  from 

  09/774,284, published as 

  2001/034435A1)

  US 11/327,987

  (US Pub. No. 2006/0106208A1)-

  pending

  	
   

  	
  filed
  1997-07-03, claiming priority to 1996-07-19 provisional.

  
	
  4

  	
   

  	
  Apparatus
  and Method for Preparative Scale Purification of Nucleic Acids (flotation of alkaline precipitate for large scale plasmid
  purification)

  	
   

  	
  WO04/024283
US10/527,618

  (US Pub. No. 2006-0166331A1)

  EP1554398A2

  CA2498518AA

  AU3267175AA

  JP2005-538717,A

  (unexamined publication no.)

  	
   

  	
  filed
  2003-09-12 as PCT app., claiming priority to 2002-09-13 (US Provisional)

  
	
  5

  	
   

  	
  Methods
  for Preparing Polynucleotide Transfection Complexes

  	
   

  	
  US 6,303,378

  (issuing from 09/178,371)

  	
   

  	
  Filed
  10-23-98, claiming priority to 10-24-97 and 7-28-98