Exhibit
10.3


Portions of this Exhibit were omitted
and have been filed separately with the Secretary of the Commission pursuant to
the Company’s application requesting confidential treatment under Rule 24b-2 of
the Exchange Act.


AGREEMENT


Effective as of May 5,
2000 (“Effective Date”), THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR
UNIVERSITY, a body having corporate powers under the laws of the State of
California (“STANFORD”), and Xenogen Corporation, a California corporation,
having a principal place of business at 860 Atlantic Avenue, Alameda, CA  94501 (“LICENSEE”), agree as follows:


1.                                      BACKGROUND


1.1                                 STANFORD
has an assignment of the invention entitled “Using Light to Detect and Track
Pathogens in Living Hosts”, from the laboratory of Dr. Christopher Contag (“Invention[s]”),
as described in Stanford Docket S94-044, and any Licensed Patent(s), as
hereinafter defined, which may issue to such Invention(s).


1.2                                 STANFORD
desires to have the Invention(s) perfected and marketed at the earliest
possible time in order that products resulting therefrom may be available for
public use and benefit.


1.3                                 LICENSEE
desires a license under said Invention(s), Licensed Materials and Licensed
Patent(s) to develop, make, have made, use, import, offer for sale and sell Licensed
Product(s) in the Licensed Field of Use, and/or to sublicense said
Invention(s), Licensed Materials and Licensed Patent(s) in the Licensed Field
of Use.


1.4                                 LICENSEE and STANFORD have a prior agreement
and amendments to the prior agreement for Invention(s), Licensed Materials and
Licensed Patent(s).  The parties
acknowledge that pursuant to the prior agreement, (i) LICENSEE has paid to
STANFORD a noncreditable, nonrefundable license issue royalty of [***] Dollars
[***], and (ii) LICENSEE has paid to STANFORD [***] for reimbursement of past
patent expenses.  The prior agreement and
amendments are superseded by this Agreement.


1.5                                 The
Invention(s) was made in the course of research supported by one or more of the
following: the American Foundation for AIDS Research, the National Institutes
of Health, The United States Public Health Service, and the Office of Naval
Research.


2.                                      DEFINITIONS


2.1                                 “Licensed
Patent(s)” means any (i) U.S. patent application Serial Number 270,631 filed
July 1, 1994 (issued on July 22, 1997 as U.S. Patent Number 5,650,135), (ii)
all divisions, substitutions, and continuations in whole or part of any of the
preceding, (iii) all foreign









 



patent
applications corresponding to or claiming priority from (including
International Application Number PCT/US95/15040 and all national applications
claiming priority therefrom), and (iv) all U.S. and foreign patents issuing on
any of the preceding, including patents of addition, reexaminations, reissues
and extensions.


2.2                                 “Licensed
Materials” means those biological materials listed in Exhibit A, and such other
agreed materials as STANFORD may provide to LICENSEE during the term of this
Agreement, which shall be added to Exhibit A.


2.3                                 “Licensed
Product(s)” means any product or part thereof in the Licensed Field of Use, the
manufacture, use, or sale of which:


(a)                                  Is
covered by a valid claim of an issued, unexpired Licensed Patent(s) directed to
the Invention(s).  A claim of an issued,
unexpired Licensed Patent(s) shall be presumed to be valid unless and until it
has been held to be invalid or unenforceable by a final judgment of a court of
competent jurisdiction from which no appeal can be or is taken or is
disclaimed, or rejected or found invalid or unenforceable in a reissue
application or re-examination proceeding or otherwise;


(b)                                 Is
covered by any claim being prosecuted in a pending application directed to the
Invention(s); or


(c)                                  Incorporates
any of the Licensed Materials.


2.4                                 “Net
Sales” means the gross revenue derived by LICENSEE from Licensed Product(s),
less the following items but only insofar as they actually pertain to the
disposition of such Licensed Product(s) by LICENSEE, are included in such gross
revenue, and are separately billed:


(a)                                  Import,
export, excise and sales taxes, and custom duties;


(b)                                 Costs
of insurance, packing, and transportation from the place of manufacture to the
customer’s premises or point of installation;


(c)                                  Costs
of installation at the place of use; and


(d)                                 Credit
for returns, allowances, or trades.


2.5                                 “Licensed
Field of Use” means all uses.


2.6                                 “Licensed
Territory” means worldwide.


2.7                                 “Exclusive”
means that, subject to Article 4, STANFORD shall not grant further licenses in
the Licensed Territory in the Licensed Field of Use.



 2
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



 


3.                                      GRANT


3.1                                 STANFORD
hereby grants and LICENSEE hereby accepts an Exclusive license under the
Licensed Patents and Licensed Materials to make, have made, import, use, lease,
sell and offer for sale and otherwise commercialize and exploit Licensed
Products in the Licensed Territory, and practice any method process or
procedure within the Licensed Patents in the Licensed Territory.


3.2                                 Said
license is Exclusive, including the right to sublicense pursuant to Article 13,
in the Licensed Field of Use for a term commencing as of July 1, 1997 and
ending on the expiration of the last to expire of the Licensed Patent(s).


3.3                                 STANFORD
shall have the right to practice the Invention(s) and use the Technology for
its own bona fide research, including sponsored research and
collaborations.  STANFORD shall have the
right to publish any information included in Licensed Materials and Licensed
Patent(s).


3.4                                 Notwithstanding Section 3.1 above, the
license granted to XENOGEN for those Licensed Materials which are [***], shall
be non-exclusive.  This Section 3.4 shall
have no effect on the Exclusive License granted herein for (i) the Licensed
Patents and (ii) all Licensed Materials and/or Licensed Product(s) other than
the [***].


4.                                      GOVERNMENT
RIGHTS


This Agreement is subject
to all of the terms and conditions of Title 35 United States Code Sections 200
through 204, including an obligation that Licensed Product(s) sold or produced
in the United States be “manufactured substantially in the United States,” and
LICENSEE agrees to take all reasonable action necessary on its part as licensee
to enable STANFORD to satisfy its obligation thereunder, relating to
Invention(s), provided that STANFORD has provided LICENSEE with written notice
of each such obligation STANFORD must meet and a description of each act LICENSEE
must take to comply with such obligation.


5.                                      DILIGENCE


5.1                                 As
an inducement to STANFORD to enter into this Agreement, LICENSEE agrees to use
all reasonable efforts and diligence to sublicense the Licensed Patent(s)
and/or to proceed with the development, manufacture, and sale or lease of
Licensed Product(s).  LICENSEE further
agrees to diligently develop markets for the Licensed Patent(s) and/or Licensed
Product(s).  LICENSEE agrees that
STANFORD may terminate this Agreement if, prior to July 1, 2000, LICENSEE has
neither sublicensed the Licensed Patent(s) nor made a Licensed Product(s)
available for commercial sale.  LICENSEE
further agrees that STANFORD may terminate this Agreement if, for any period of
one (1) full year after first sublicense or commercial sale, LICENSEE has
neither maintained at least one sublicense in force nor sold any Licensed
Product(s).


5.2                                 Progress
Report - On or before September 1 of each year until LICENSEE markets a
Licensed Product(s) or grants a sublicense under the Licensed Patent(s),
LICENSEE shall make a written annual report to STANFORD covering the preceding
year ending June 30,



 3
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



regarding the
progress of LICENSEE toward commercial use of Licensed Product(s) or
sublicensing of Licensed Patent(s).  Such
report shall include, as a minimum, information sufficient to enable STANFORD
to satisfy reporting requirements of the U.S. Government and for STANFORD to
ascertain progress by LICENSEE toward meeting the diligence requirements of
this Article 5.


5.3                                 In
the event that LICENSEE fails to make available for commercial sale a Licensed
Product based on a particular Licensed Material listed in Exhibit A for any
period of one (1) full year after July 1, 2000, STANFORD may convert the
Exclusive License granted to LICENSEE solely with respect to that particular
Licensed Material (hereinafter, the “Uncommercialized Material”) to a
non-exclusive license, provided that STANFORD gives LICENSEE written notice of
such intent and LICENSEE fails to commercialize the Uncommercialized Material within
ninety (90) days of such notice. 
STANFORD agrees that nothing in this Section 5.3 shall have any effect
on the Exclusive License granted to LICENSEE under any Licensed Material(s) or
Licensed Product(s) other than the Uncommercialized Material.  STANFORD further agrees that nothing in this
Section 5.3 shall have any effect on the Exclusive License granted to LICENSEE
under the Licensed Patent(s) in Article 3 herein.


6.                                      ROYALTIES


6.1                                 Beginning July 1, 2000, and each July 1
thereafter, LICENSEE shall pay to STANFORD a yearly royalty of [***].  Said yearly royalty payments are
nonrefundable, but they are creditable against earned royalties to the extent
provided in Paragraph 6.4.


6.2                                 In addition, LICENSEE shall pay STANFORD
earned royalties of [***] of Net Sales.


6.3                                 In
the event that a Licensed Product is sold in combination with or containing one
or more products or components, then Net Sales on the combination product shall
be calculated using one of the following methods:


(a)                                  By
multiplying the net selling price of the combination product by the fraction
A/A+B, where A is the gross selling price, during the royalty-paying period
being considered, of the Licensed Product sold separately, and B is the gross
selling price, during the royalty period in question, of the other products or
components sold separately; or


(b)                                 In
the event that no such separate sales are made of the Licensed Product, Net
Sales on the combination product for royalty determination shall be as
reasonably allocated between such Licensed Product and the other active
products or components, based on their relative importance and proprietary
protection, as agreed by the parties.  If
the parties fail to reach agreement such allocation shall be submitted to
binding arbitration.


6.4                                 Creditable payments under this Agreement
shall be an offset to LICENSEE against up to [***] of each earned royalty
payment which LICENSEE would be required to pay pursuant to Paragraph 6.2 until
the entire credit is exhausted.



 4
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



 


6.5                                 If
this Agreement is not terminated in accordance with other provisions hereof,
LICENSEE’s obligation to pay royalties hereunder shall continue for so long as
LICENSEE, by its activities would, but for the license granted herein, infringe
a valid claim of an unexpired Licensed Patent(s) of STANFORD covering said
activity.


6.6                                 The
royalty on sales in currencies other than U.S. Dollars shall be calculated
using the appropriate foreign exchange rate for such currency quoted by the
Bank of America (San Francisco) foreign exchange desk, on the close of business
on the last banking day of each calendar quarter.  Royalty payments to STANFORD shall be in U.S.
Dollars.  All non-U.S. taxes related to
royalty payments shall be paid by LICENSEE and are not deductible from the
payments due STANFORD.


7.                                      ROYALTY
REPORTS,  PAYMENTS, AND ACCOUNTING


7.1                                 Quarterly
Earned Royalty Payment and Report - Beginning with the first sale of a
Licensed Product(s) or the first sublicense, LICENSEE shall make written
reports (even if there are no sales or sublicenses) and earned royalty payments
to STANFORD within thirty (30) days after the end of each calendar
quarter.  This report shall state the
number, description, and aggregate Net Sales of Licensed Product(s) during such
completed calendar quarter, and resulting calculation pursuant to Paragraph 6.2
of earned royalty payment due STANFORD for such completed calendar
quarter.  The report shall also state the
number and description of, and fees due under, sublicenses issued by Xenogen
during such completed calendar quarter, and resulting calculation pursuant to
Paragraph 13.5 of earned royalty payment due STANFORD for such completed
calendar quarter.  Concurrent with the
making of each such report, LICENSEE shall include payment due STANFORD of
royalties for the calendar quarter covered by such report.


7.2                                 Accounting
- LICENSEE agrees to keep and maintain records for a period of three (3) years
showing the sublicenses granted and the manufacture, sale, use, and other
disposition of products sold or otherwise disposed of under the license herein
granted.  Such records will include
general ledger records showing cash receipts and expenses, and records which
include production records, customers, serial numbers, and related information
in sufficient detail to enable the royalties payable hereunder by LICENSEE to
be determined.  LICENSEE further agrees
to permit its books and records to be examined by STANFORD from time to time to
the extent necessary to verify reports provided for in Paragraph 7.1.  Such examination is to be made by STANFORD or
its designee, at the expense of STANFORD, except in the event that the results
of the audit reveal an underreporting of royalties due STANFORD of five percent
(5%) or more, then the audit costs shall be paid by LICENSEE.


8.                                      NEGATION
OF WARRANTIES


8.1                                 Nothing
in this Agreement is or shall be construed as:


(a)                                  A
warranty or representation by STANFORD as to the validity or scope of any
Licensed Patent(s);



 5
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



 


(b)                                 A
warranty or representation that anything made, used, sold, or otherwise disposed
of under any license granted in this Agreement is or will be free from
infringement of patents, copyrights, and other rights of third parties;


(c)                                  An
obligation to bring or prosecute actions or suits against third parties for
infringement, except to the extent and in the circumstances described in
Article 12;


(d)                                 Granting
by implication, estoppel, or otherwise any licenses or rights under patents or
other rights of STANFORD or other persons other than Licensed Patent(s),
regardless of whether such patents or other rights are dominant or subordinate
to any Licensed Patent(s); or


(e)                                  An
obligation to furnish any technology or technological information.


8.2                                 Except
as expressly set forth in this Agreement, STANFORD MAKES NO REPRESENTATIONS AND
EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED.  THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE
LICENSED PRODUCT(S) WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR
OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.


8.3                                 LICENSEE
agrees that nothing in this Agreement grants LICENSEE any express or implied
license or right under or to U.S. Patent 4,656,134 “Amplification of Eucaryotic
Genes” or any patent application corresponding thereto.


9.                                      INDEMNITY


9.1                                 LICENSEE
agrees to indemnify, hold harmless, and defend STANFORD, Stanford Hospital and
Clinics and Stanford Health Services and their respective trustees, officers,
employees, students, and agents against any and all claims for death, illness,
personal injury, property damage, and improper business practices arising out
of the manufacture, use, sale, or other disposition of Invention(s), Licensed
Patent(s), Licensed Product(s), or Licensed Materials by LICENSEE or sublicensee(s),
or their customers.


9.2                                 STANFORD
shall not be liable for any indirect, special, consequential or other damages
whatsoever, whether grounded in tort (including negligence), strict liability,
contract or otherwise.  STANFORD shall
not have any responsibilities or liabilities whatsoever with respect to
Licensed Products(s).


9.3                                 LICENSEE
shall at all times comply, through insurance or self-insurance, with all
statutory workers’ compensation and employers’ liability requirements covering
any and all employees with respect to activities performed under this
Agreement.


9.4                                 In
addition to the foregoing, LICENSEE shall maintain, during the term of this
Agreement, Comprehensive General Liability Insurance, including Products
Liability Insurance, with reputable and financially secure insurance carrier(s)
to cover the activities



 6
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



of LICENSEE
and its sublicensee(s).  Commencing with
the introduction of Licensed Product(s) into humans for any purpose, including
clinical trials, such insurance shall provide minimum limits of liability of
Five Million Dollars ($5,000,000) and shall include STANFORD, Stanford
University Hospital, their trustees, directors, officers, employees, students,
and agents as additional insureds.  Such
insurance shall be written to cover claims incurred, discovered, manifested, or
made during or after the expiration of this Agreement.  At STANFORD’s request, LICENSEE shall furnish
a Certificate of Insurance evidencing primary coverage and requiring thirty
(30) days prior written notice of cancellation or material change to
STANFORD.  LICENSEE shall advise
STANFORD, in writing, that it maintains excess liability coverage (following
form) over primary insurance for at least the minimum limits set forth above.  All such insurance of LICENSEE shall be
primary coverage; insurance of STANFORD or Stanford Health Services shall be
excess and noncontributory.


10.                               MARKING


10.1                           Prior
to the issuance of any patents on any Licensed Products, LICENSEE agrees to
mark all Licensed Products (or their containers or labels) covered by such
patents and made, sold, or otherwise disposed of by LICENSEE under the license
granted in this Agreement with the words “Patent Pending,” and following the
issuance of one or more patents, with the numbers of such patent(s).


10.2                           STANFORD
agrees to provide LICENSEE with notice of all STANFORD patent applications
filed (and all STANFORD patents issuing) on any Licensed Products based on
Licensed Materials listed in Exhibit A within 30 days of (i) the filing of such
patent applications, and (ii) issuance of such patents.  No such notice is required from STANFORD to
LICENSEE for patents and patent applications that are included in the Licensed
Patent(s).


11.                               STANFORD
NAMES AND MARKS


Except in connection with
the identification of the source of Invention(s), Licensed Patent(s) and
Licensed Products(s), LICENSEE agrees not to identify STANFORD in any
promotional advertising or other promotional materials to be disseminated to
the public or any portion thereof or to use the name of any STANFORD faculty
member, employee, or student or any trademark, service mark, trade name, or
symbol of STANFORD or the Stanford Health Services, or that is associated with
either of them, without STANFORD’s prior written consent.  Notwithstanding the above, LICENSEE may use
in any manner it deems fit the name(s) of STANFORD faculty members or employees
who are inventors on the Inventions, Licensed Patents and/ or Licensed
Products, and who are employees of or have a consulting agreement with LICENSEE
(“Affiliates”), provided that LICENSEE obtains the voluntary consent of the
Affilites for such use.  STANFORD agrees
that the names of the Affiliates and Affiliates’ connection with STANFORD will
appear in disclosure documents required by securities laws, and in other
regulatory and administrative filings in the ordinary course of LICENSEE’S
business.  Any use of STANFORD’s name
shall be limited to statements of fact and shall not imply endorsement of
LICENSEE’s products or services.



 7
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



 


12.                               PATENT
PROTECTION AND INFRINGEMENT


12.1                           LICENSEE
shall have the primary responsibility for the prosecution, filing and
maintenance of all Licensed Patents, including the conduct of all interference,
opposition, nullity and revocation proceedings, using counsel of its choice;
provided, however, that STANFORD shall have reasonable opportunity to advise
and consult with LICENSEE on such matters and may instruct LICENSEE to take
such action as STANFORD reasonably believes necessary to protect the Licensed
Patent(s).  Should LICENSEE elect to
abandon any patent or patent application in any country, it shall give timely
notice to STANFORD, who may continue prosecution or maintenance, at its sole
expense and LICENSEE shall have not further rights with respect to such patent
application or patent in such country. 
In the event that a conflict arises with respect to patent counsel
selected by LICENSEE, STANFORD may, with just cause and after consulting with
LICENSEE, select new patent counsel reasonably acceptable to LICENSEE.


12.2                           Payment
of all reasonable fees and costs relating to the filing, prosecution and
maintenance of all patent applications and patents within the Licensed
Patent(s), including interference and/or opposition, nullity and revocation
proceedings, shall be the responsibility of LICENSEE.  STANFORD shall direct the patent counsel to
send invoices for such fees and costs directly to LICENSEE with a copy to
STANFORD, and LICENSEE shall pay such patent counsel directly amounts due.


12.3                           STANFORD
shall promptly inform LICENSEE of any suspected infringement of any Licensed
Patent by a third party and any declaratory judgment filed with respect to any
Licensed Patent.  LICENSEE shall have the
initial right but not the obligation, at its expense, to initiate and control
any proceeding relating to any infringement by a third party of any Licensed
Patents, any declaratory action alleging invalidity or noninfringement of any
Licensed Patents, or any interference, opposition, nullity or revocation
proceeding relating to any Licensed Patents (“a Protective Action”).  In pursuing any such Protective Action,
LICENSEE shall provide STANFORD with material information related to the
Protective Action, and shall have the right, but not the obligation, to join
STANFORD as a party to the Protective Action, at LICENSEE’s expense.  STANFORD shall have the right to participate
in the Protective Action with its own counsel at its own expense.  If LICENSEE brings a Protective Action it may
enter into a settlement, consent judgment or other voluntary final disposition
of such Protective Action, at its sole option, and any damages recovered by a
Protective Action shall be used first to reimburse LICENSEE for the costs
(including attorney’s and expert fees) of such Protective Action actually paid
by LICENSEE, and the remainder, if any, shall be retained by LICENSEE, except
LICENSEE shall pay STANFORD two percent (2%) of said remainder, provided, if
STANFORD joins in any Protective Action at its inception and shares equally in
the costs (including attorney’s and expert fees) incurred in its conduct, in
the event of any recovery each party shall be reimbursed for its expenses
incurred in such Protective Action and STANFORD and LICENSEE shall equally
share any remainder.


12.4                           If
LICENSEE, or its sublicensee pursuant to Section 13.6, decides not to bring a
Protective Action after LICENSEE receives notice from STANFORD pursuant to
Section 12.3,



 8
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



LICENSEE shall
inform STANFORD and STANFORD may institute a Protective Action.  In such event, STANFORD shall control such Protective
Action, including any settlement, consent judgment or other voluntary final
disposition thereof at its sole option, and shall bear the entire cost of such
Protective Action and shall be entitled to retain the entire amount of any
recovery or settlement.  STANFORD may, at
its expense, join LICENSEE as a party to such a Protective Action and LICENSEE
shall cooperate reasonably with STANFORD in any such Protective Action, at
STANFORD’s expense.


12.5                           Should
either party commence a Protective Action under this Section 12 and thereafter
elect to abandon the same, it shall give timely notice to the other party who
may continue prosecution of such Protective Action; provided, however, that the
sharing of past and future expenses and any recovery in such Protective Action
shall be as mutually agreed by the parties.


12.6                           In
any Protective Action under this Section 12, the other party hereto shall, at
the request and expense of the party initiating such Protective Action,
cooperate in all respects and, to the extent possible, have its employees
testify when requested and make available relevant records, papers,
information, samples and the like.


13.                               SUBLICENSE(S)


13.1                           LICENSEE
may grant sublicense(s) during the Exclusive period.  LICENSEE may sublicense all or a portion of
the rights granted to it pursuant to this Agreement, subject to the conditions
of this Article 13.  A “Patent Sublicense”
means a sublicense which grants all or a portion of the rights under the
Licensed Patent(s) to practice any method, process or procedure claimed therein
in all or a part of the Licensed Territory. 
It is understood that a Patent Sublicense shall not grant any rights to
lease, sublicense, sell, offer for sale, or otherwise commercially dispose of
any Licensed Products in any part of the Licensed Territory.  A “Products Sublicense” means a sublicense
which grants all or a portion of the rights to lease, sell, offer for sale and
otherwise commercially exploit Licensed Products in all or a part of the
Licensed Territory.  It is understood
that a Products Sublicense may also include rights under the Licensed
Patent(s).


13.2                           If
LICENSEE is unable or unwilling to serve or develop a potential market or
market territory for which there is a willing sublicensee(s), LICENSEE will, at
STANFORD’s request, negotiate in good faith a sublicense(s) hereunder.


13.3                           Any
sublicense(s) granted by LICENSEE under this Agreement shall be subject and
subordinate to terms and conditions of this Agreement, except:


(a)                                  Sublicense
terms and conditions shall reflect that any sublicensee(s) shall not further
sublicense without the written consent of STANFORD, which consent shall not be
unreasonably withheld; and


(b)                                 The
earned royalty rate specified in the sublicense(s) may be at higher rates than
the rates in this Agreement



 9
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



 


Such sublicense(s) (including, without limitation, any non-exclusive
sublicenses) shall remain in effect in the event of any termination of this
Agreement, provided that upon request by STANFORD, such sublicensee agrees in
writing to be bound by the applicable terms of this Agreement.  All Products Sublicenses shall expressly
include the provisions of Articles 7, 8, and 9 for the benefit of
STANFORD.  All Patent Sublicenses granted
to commercial or for-profit entities shall expressly include the provisions of
Articles 8 and 9 for the benefit of STANFORD.


13.4                           LICENSEE
agrees to provide STANFORD a copy of any sublicense granted pursuant to this
Article 13.


13.5                           LICENSEE
will pay to STANFORD [***] of
all non-equity payments received by LICENSEE from its sublicensee(s) for the
grant of a sublicense to practice the Licensed Patent(s), excluding those made
under consulting or service agreements. 
In addition, LICENSEE shall pay to STANFORD [***] of all earned royalty income received by LICENSEE from
each sublicense from the sale of Licensed Product(s); provided however, that
LICENSEE shall pay to STANFORD no less than [***] and no more than [***]
of such royalty income.


13.6                           With
the prior written consent of LICENSEE, and the prior written consent of
STANFORD, which shall not be unreasonably withheld, a sublicensee may bring a
Protective Action, subject to the provisions of Section 12.3.


14.                               TERMINATION


14.1                           LICENSEE
may terminate this Agreement by giving STANFORD notice in writing at least
thirty (30) days in advance of the effective date of termination selected by
LICENSEE.


14.2                           STANFORD
may terminate this Agreement if LICENSEE:


(a)                                  Is
in default in payment of royalty or providing of reports;


(b)                                 Is
in breach of any provision hereof; or


(c)                                  Provides
any false report;


and LICENSEE fails to remedy any such default, breach, or false report
within thirty (30) days after written notice thereof by STANFORD.


14.3                           In
the event of any termination of this Agreement, LICENSEE shall provide for the
transfer to STANFORD of all obligations accrued or accruable after such
termination in any active sublicense(s) issued pursuant to Section 13.  Such obligations shall include the payment of
any royalties specified in such sublicense(s) that have accrued after termination
of this Agreement.


14.4                           Surviving
any termination are:



 10
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



 


(a)                                  LICENSEE’s
obligation to pay royalties accrued or accruable;


(b)                                 Any
cause of action or claim of LICENSEE or STANFORD, accrued or to accrue, because
of any breach or default by the other party;


and


(c)                                  The
provisions of Articles 7, 8, 9, 16 and 20, Sections 13.3, 14.3, and 14.4 and
any other provisions that by their nature are intended to survive.


15.                               ASSIGNMENT


Neither party may assign
this Agreement or any part hereof without the express written consent of the
other, which consent shall not be unreasonably withheld; provided, however,
LICENSEE may assign this Agreement or any portion hereof to an affiliate or to
a successor of all or substantially all its business relating to the Licensed Patent(s)
without the written consent of STANFORD and shall provide STANFORD notice of
any such assignment.


16.                               ARBITRATION


16.1                           Any
controversy arising under or related to this Agreement, and any disputed claim
by either party against the other under this Agreement excluding any dispute
relating to patent validity or infringement arising under this Agreement, shall
be settled by arbitration in accordance with the Licensing Agreement
Arbitration Rules of the American Arbitration Association.


16.2                           Upon
request by either party, arbitration will be by a third party arbitrator
mutually agreed upon in writing by LICENSEE and STANFORD within thirty (30)
days of such arbitration request. 
Judgment upon the award rendered by the arbitrator shall be final and
nonappealable and may be entered in any court having jurisdiction thereof.


16.3                           The
parties shall be entitled to discovery in like manner as if the arbitration
were a civil suit in the California Superior Court.  The Arbitrator may limit the scope, time
and/or issues involved in discovery.


16.4                           Any
arbitration shall be held at Stanford, California, unless the parties hereto
mutually agree in writing to another place.


17.                               NOTICES


All notices under this
Agreement shall be deemed to have been fully given when done in writing and
deposited in the United States mail, registered or certified, and addressed as
follows:




	
  To STANFORD:

  	
   

  	
  Office of Technology Licensing

  
	
   

  	
   

  	
  Stanford
  University

  
	
   

  	
   

  	
  900 Welch Road,
  Suite 350

  
	
   

  	
   

  	
  Palo Alto, CA
  94304-1850

  
	
   

  	
   

  	
  Attention:
  Director

  






 



 11
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



 




	
  To LICENSEE:

  	
   

  	
  Xenogen Corporation

  
	
   

  	
   

  	
  860 Atlantic
  Avenue

  
	
   

  	
   

  	
  Alameda, CA
  94501

  
	
   

  	
   

  	
  Attention:
  President

  






 


Either party may change its address upon written notice to the other
party.


18.                               WAIVER


None of the terms of this
Agreement can be waived except by the written consent of the party waiving
compliance.


19.                               APPLICABLE
LAW


This Agreement shall be
governed by the laws of the State of California applicable to agreements
negotiated, executed and performed wholly within California.


20.                               CONFIDENTIALITY


STANFORD shall maintain
this Agreement and the reports and any information provided by LICENSEE to
STANFORD pursuant to Articles 5, 7 and 13 in confidence and shall be treated
with at least the same degree of care as used to maintain secrecy of STANFORD’s
other confidential information.  STANFORD
may, however, disclose to third parties total annual royalty payments and
general statistical information regarding payments made hereunder in the
context of disclosing statistical information pertaining to the performance of
the STANFORD Office of Technology Licensing.


21.                               ENTIRE
AGREEMENT


This Agreement
constitutes the entire agreement between LICENSEE and STANFORD and supersedes
all prior communications, understandings and agreements with respect to the
subject matter of this Agreement.  This
Agreement may not be amended except with a written agreement signed by LICENSEE
and STANFORD.



 12
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.
 






 



 


IN WITNESS WHEREOF, the
parties hereto have executed this Agreement in duplicate originals by their
duly authorized officers or representatives.


	
  

  	
   

  	
   

  	
  THE BOARD OF TRUSTEES OF THE LELAND

  
	
   

  	
   

  	
   

  	
  STANFORD JUNIOR UNIVERSITY

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
  Signature:

  	
  /s/ Katharine Ku

  
	
   

  	
   

  	
   

  	
  Name:

  	
   

  	
  Katharine Ku

  
	
   

  	
   

  	
   

  	
  Title:

  	
   

  	
  Director, Technology Licensing

  
	
   

  	
   

  	
   

  	
  Date:

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
  LICENSEE

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
  Signature:

  	
  /s/ David W. Carter

  
	
   

  	
   

  	
   

  	
  Name:

  	
   

  	
  David W. Carter

  
	
   

  	
   

  	
   

  	
  Title:

  	
   

  	
  Chairman and Co-CEO

  
	
   

  	
   

  	
   

  	
  Date:

  	
   

  	
   

  
							



 


Exhibit A:  Licensed Materials



 13
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.














 


Exhibit A


[***]



 A-1
 Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 24b-2 of the Exchange Act.