*** Confidential Treatment Requested. Confidential portions of this
document have been redacted and have been separately filed with the Commission.


 


Exhibit 10.14


 


[LOGO]


 


	
   

  	
  Shaded Area - Internal University Use Only

  
	
   

  	
  OTC
  Agreement
  No.:                                   

  
	
   

  	
  OTC
  Docket No.(s): Z02092, Z05055

  



 


UNIVERSITY OF MINNESOTA


 


EXCLUSIVE PATENT LICENSE AGREEMENT


 


THIS AGREEMENT
is dated and effective as of January 24, 2007 (the “Effective Date”), and is
made by and between Regents of the University
of Minnesota, a constitutional corporation under the laws of the
state of Minnesota (the “University”), and Expression Diagnostics
(XDx), having offices at 3260 Bayshore Blvd., Brisbane, CA 94005, a
corporation under the laws of the state of Delaware (the “Company”).


 


Purpose


 


The
University owns the right to license to others certain rights to the Licensed
Patent(s), as that term is defined and used in this Agreement. The Company
desires that the University grant it a license to use, develop, and
commercialize the inventions claimed in the Licensed Patents. The University is
willing to grant such a license on the terms set forth below.


 


NOW, THEREFORE,
the parties agree that:


 


1.             Definitions. For
purposes of interpreting this Agreement, the following terms shall have the
meanings ascribed to them below in this article:


 


1.1.          “Event of Force Majeure” means an unforeseeable act that wholly
prevents a party from performing one or more of its material duties under this
Agreement and that was outside of the reasonable control of the party. An event
of Force Majeure includes, without limitation, acts of war, sabotage, or of
God, insurrection and riot, and labor strikes or other labor disturbance, acts
of any governmental body, embargo, fire, flood, interruption of or delay in
transportation, unavailability of, interruption of or delay in
telecommunications or third party services, or inability, despite such party’s
commercially reasonable efforts, to obtain raw materials, supplies or power
used in or equipment needed for meeting obligations hereunder. An Event of
Force Majeure shall not mean a party’s inability to obtain a third party’s
consent to any act or omission.


 


1.2.          “Field of Use” means the field(s) of use described in section 3(a) of
attached Exhibit A.


 


1.3.          “First Commercial Sale” means the first bona fide commercial sale of a
Licensed Product to a non-Affiliate third party by or under the authority of
the Company or its sublicensees, which for the avoidance of doubt shall not
include any sale or other disposition of a Licensed Product pursuant to the
testing and validation of the Licensed Product including, without limitation,
sales to investigators in a clinical study or a third party collaborator.


 


1

















 


1.4.          “Independent Patent Improvements” means a patented modification,
improvement or enhancement (an “Improvement”) of a device, method, or product
described in a Licensed Patent excluding any MTA Intellectual Property,
provided that (i) Dr. Emily Gillespie is an inventor of the Improvement; (ii)
the Improvement was first conceived or reduced to practice during the first
three (3) years of the term of this Agreement; (iii) the University solely owns
all present and future rights, titles, and interests, including patent and
other intellectual property rights, in the Improvement, free and clear of any
third party’s rights, except for the rights of the United States of America;
and (iv) but for the license granted in this Agreement, the Improvement would
infringe (including under the doctrine of equivalents) a claim in a Licensed
Patent or in a Patent Application.


 


1.5.          “MTA Intellectual Property” means the University’s right, title and
interest in and to the intellectual property defined as University Sole
Inventions and Joint Inventions in that certain Material Transfer Agreement by
and among the Company, the Feinstein Institute for Medical Research, and the
University, dated March 29, 2005.


 


1.6.          “Net Sales Price” means the gross amount invoiced for sales, leases, and
other dispositions of Licensed Products less (i) all trade, quantity, and cash
discounts actually allowed, (ii) all credits and allowances actually granted
due to rejections, returns, billing errors, and retroactive price reductions,
(iii) duties, and (iv) excise, sale and use taxes, and equivalent taxes. In the
event the Company or a sublicensee, as the case may be, sells, leases, or
disposes of a Licensed Product (i) to a third party that owns fifty percent
(50%) or more of the voting capital stock, or like equity security, of the
Company or the sublicensee, as the case may be, or (ii) to a third party in
which the Company or a sublicensee, as the case may be, owns fifty percent
(50%) or more of the voting capital stock, or like equity security (such third
party is hereinafter referred to as an “Affiliate”), the “Net Sales Price” for
that transaction for purposes of this Agreement shall be equal to the price the
Company or the sublicensee, as the case may be, charges non-Affiliate third
parties for the Licensed Product or if the Company or the sublicensee does not offer
to sell the Licensed Product to the public, the price charged by the Company or
the sublicensee for a product of similar kind, quality, and quantity.


 


1.7.          “Licensed Patent” means the patent(s) described in section 2(a) of
attached Exhibit A along with any valid and subsisting patent issued during the
term of this Agreement by the United States Patent and Trademark Office or any
like foreign body with respect to a Patent Application or issuing from any
Patent Application or claiming priority to any Patent Application or Licensed Patent.
The term “Licensed Patent” also means any reissues or reexaminations of a Licensed
Patent.


 


1.8.          “Licensed Product” means any product or good in the Field of Use that
is made by, made for, sold, transferred, or otherwise disposed of by the
Company or its sublicensees during the term of this Agreement and the Post
Termination Period and that, but for the granting of the rights set forth in
this Agreement, would infringe (including under the doctrine of equivalents)
one or more Valid Claims in a Licensed Patent or claims in a Patent
Application, or any product or good that is made using a process or machine
that is covered by a Valid Claim in a Licensed Patent or a claim in a Patent
Application. For the purposes of this section, a claim in


 


2

















 


a Licensed Patent shall be
considered a “Valid Claim” to the extent it has not been held invalid or
unenforceable by an unappealed or unappealable judgment of a court of competent
jurisdiction. For the purposes of this section, each claim in a Patent
Application shall be considered a “Valid Claim.” The term “Licensed Product”
also means any service provided by or for the Company or its sublicensees that
incorporates all or any portion of a product that would be a Licensed Product.
The term “Licensed Product” excludes a product, good or service that is sold,
transferred or otherwise disposed in a country in which no Licensed Patent is
then valid and subsisting and no Patent Application is then pending on the date
of each sale, transfer or other distribution. Unless the parties otherwise
agree in writing, the term “Licensed Product” refers only to products and goods
manufactured, made, sold, transferred, or otherwise disposed of during the term
of this Agreement.


 


1.9.          “Licensed Technology” means collectively the inventions claimed in each
Licensed Patent and each Patent Application.


 


1.10.        “Patent Application” means the patent application(s) described in
section 2(b) of attached Exhibit A. The term “Patent Application” also means
any continuations, continuations-in-part, divisions or any other patent
application claiming priority to a Patent Application or Licensed Patent. “Patent
Application” further refers both to filings in the United States Patent and
Trademark Office and filings in any like foreign body.


 


1.11.        “Payment” means a payment to be made by the Company to the University specified
in section 6.1 of this Agreement and described in section 6 of attached Exhibit
A.


 


1.12.        “Performance Milestone” means an act or event specified in section 5.1
of this Agreement and described in section 7 of attached Exhibit A.


 


1.13.        “Post-termination Period” means the one hundred eighty (180)-day period
commencing on the last day of the term of this Agreement.


 


1.14.        “Sublicense Income” means the cash and other consideration (other than
simple running royalties on sales, leases or other dispositions of Licensed
Products) attributable to granting a sublicense pursuant to section 3.1.2.


 


1.15.        “Territory” means the geographical area described in section 3(b) of
attached Exhibit A.


 


2.             Term. The term of
this Agreement shall commence on the Effective Date and, unless terminated
earlier as provided below in article 8, this Agreement shall expire on the date
on which there is no Valid Claim in the Field of Use in a Licensed Patent and
no Patent Application is pending in any such country.


 


3

















 


3.             Grant of License.


 


3.1.          The Company’s Rights.


 


3.1.1.       Subject
to the terms and conditions of this Agreement, the University hereby grants to
the Company, and the Company hereby accepts, an exclusive license under the
University’s right, title and interest in and to the Licensed Technology to
make (including to have made on its behalf), use, offer to sell or sell, offer
to lease or lease, import, or otherwise offer to dispose or dispose of Licensed
Products in the Territory in the Field of Use. No provision of this Agreement
shall be construed to grant the Company, by implication, estoppel or otherwise,
any rights other than the rights expressly granted it in this Agreement to the
Licensed Technology, a Licensed Patent or Patent Application, or to any other
University-owned technology, patent applications, or patents. This license may
be extended to Affiliates of the Company upon prior written notice to the
University.


 


3.1.2.       The
Company shall have the right, exercisable from time to time during the term of
this Agreement, to sublicense its rights under this Agreement. The Company
shall deliver to the University a true, correct, and complete copy of the
sublicense agreement or such other agreement under which the Company purports
or intends to grant such sublicense rights within at least thirty (30) days
after the execution of such agreement. The Company shall include terms and
conditions in all sublicenses substantially similar to sections 5.2, 5.4, 6.3,
8.3, 9.4, 10.4, and 11.3 and subsection 6.3.2 and an obligation for
sublicensees to include such substantially similar terms and conditions in its
sublicenses.


 


3.1.3.       The
Company, without the prior approval of the University, may assign all, but no
less than all, its rights and delegate all its duties under this Agreement to
another if (i) the Company delivers to the University written notice of the
proposed assignment (along with pertinent information about the terms of the
assignment and assignee) no more than sixty (60) days prior to the effective date
of the event described below in part ii of this paragraph, and (ii) the
assignment is made as a part of and in connection with (A) the sale by the
Company of all or substantially all of its assets related to this Agreement to
a single purchaser, (B) the sale, transfer, or exchange by the shareholders,
partners, or equity owners of the Company of a majority interest in the Company
to a single purchaser, or (C) the merger of the Company into another
corporation or other business entity. Any assignment attempted to be made or
made in violation of this subsection shall be void and shall, without further
act, cause the immediate termination of this Agreement.


 


3.2.          The United States Government’s Rights. The University acknowledges in section 1 of
attached Exhibit A whether, to its knowledge, the Licensed Technology was
funded, in whole or in part, by the federal government of the United States of
America. The parties acknowledge and agree that the federal government of the
United States of America has certain rights in and to any government-funded
Licensed Technology as those rights are described in Chapter 18, Title 35 of
the United States Code and accompanying regulations, including Part 401,
Chapter 37 of the Code of Federal Regulations, and that the parties’ rights and
obligations under this Agreement to any government-funded Licensed Technology,
including the grant of license set forth above in subsection 3.1.1, are subject
to the applicable terms of the aforementioned United States laws.


 


4

















 


3.3.          The University’s Rights. The University retains an irrevocable,
nonexclusive right to use the Licensed Technology solely for bona fide educational,
non-commercial research, and medical purposes and the University shall have the
right to sublicense its rights under this section to one or more non-profit
academic or other research institutions solely for bona fide educational and
non-commercial research purposes.


 


4.             Applications and Patents.


 


4.1.          Patent Application Filings during the Term of
this Agreement.


 


4.1.1.       As of
and after the Effective Date, the University shall use its reasonable efforts
to diligently and expeditiously cause Licensed Patents to be issued with the
broadest, reasonably attainable claim coverage in the applicable countries; the
University shall consult with and inform the Company promptly of the status of
the prosecution of the Patent Applications, including delivering to the Company
pertinent notices, written and oral communications with governmental officials,
and documents, and shall consult with the Company on the prosecution of the
Patent Applications; and the Company shall bear all costs, including
application and attorneys’ fees, of filing and prosecuting such Patent
Applications and, if a Licensed Patent is issued during the term of this
Agreement, of maintaining it.


 


4.1.2.       Following
the Effective Date, the Company or its designee will be permitted to
review/edit and make recommendations for changes regarding the preparation,
filing, prosecution and maintenance of the Patent Applications, which the University
shall not unreasonably refuse. In connection therewith the University agrees to:
(i) use patent counsel reasonably acceptable to the Company; (ii) consult with
and keep the Company reasonably informed with respect to such activities
including providing the Company a reasonable opportunity to review and comment
on all proposed submissions to patent offices before submission. Further, if
the USPTO or a foreign counterpart thereof issues a restriction requirement or
foreign equivalent thereof requiring the election of one or more genes to be
prosecuted, the Company shall have the right to designate which one or more
genes are to be prosecuted. The Company shall be responsible for reasonable
costs associated with such preparation, filing, and prosecution with the
exception of new patent applications requested solely by the University. For
clarity, the University shall have the right to control the filing,
preparation, prosecution and maintenance of the Licensed Patents and the Patent
Applications; provided, however, if the Company elects to not pay for the
filing, preparation, prosecution or maintenance or any Patent Application or
Licensed Patent or pay any fee related thereto, the Company shall promptly notify
the University of such election, but in no case later than sixty (60) days
prior to any required action relating to the filing, preparation, prosecution
or maintenance of such Patent Application or Licensed Patent. In such event,
the University shall have the right, at its option, to control the filing,
preparation, prosecution and/or maintenance of any such Patent Application or
Licensed Patent at its own expense and Company shall have no rights or licenses
under this Agreement under such Patent Applications or Licensed Patent.


 


5

















 


4.2.          Maintenance of Licensed Patents. The University shall take all commercially reasonable
steps to cause each Licensed Patent to remain or be valid and subsisting.


 


4.3.          Ownership of the Licensed Patents and Patent Applications. No provision of this Agreement grants the
Company any rights, titles, or interests (except for the grant of license in subsection
3.1.1 of this Agreement) in the Licensed Patents or Patent Applications, notwithstanding
the Company’s payment of all or any portion of the patent prosecution, maintenance,
and related costs.


 


5.             Commercialization.


 


5.1.          Commercialization and Performance Milestones. The Company shall use its commercially
reasonable efforts, consistent with sound and reasonable business practices and
judgment, to commercialize the Licensed Technology and to manufacture and offer
to sell and sell Licensed Products as soon as practicable and to maximize sales
thereof. Unless excused by the occurrence of an Event of Force Majeure during
the term of this Agreement, the Company shall perform, or shall cause to happen
or be performed, as the case may be, all the performance milestones described
..in section 7 of attached Exhibit A.


 


5.2.          Covenants Regarding the Manufacture of
Licensed Products. The
Company hereby covenants and agrees that the manufacture, use, sale, or
transfer of Licensed Products shall comply with all applicable federal and
state laws, including all federal export laws and regulations. The Company hereby
further covenants and agrees that, pursuant to 35 United States Code Section
205, it shall, and it shall cause each sublicensee, to substantially manufacture
in the United States of America all Licensed Products embodying or produced through
the use of an invention that is subject to the rights of the federal government
of the United States of America, unless the appropriate federal agency grants a
waiver of such manufacturing requirement in which case Company agrees to notify
University of such waiver within a reasonable period after grant of same, and
at least thirty (30) days prior to any such manufacture outside of the United States.


 


5.3.          Commercialization Reports. Throughout the term of this Agreement and
during the Post-termination Period, and within thirty (30) days of the date
specified in the schedule set forth in section 5 of attached Exhibit A, the
Company shall deliver to the University written reports of the Company’s and
the sublicensees’ efforts and plans to commercialize the Licensed Technology
and to manufacture, offer to sell, or sell Licensed Products. Such report shall
include the Company’s representation as to whether gene sequences in the
Licensed Technology are being used in the development of Licensed Products,
including in validation studies.


 


5.4.          Use of the University’s Name and Trademarks
or the Names of University Faculty, Staff, or Students. No provision of this Agreement grants the
Company or sublicensee any right or license to use the name or trademarks of
the University or the names, or identities of any member of the faculty, staff,
or student body of the University. The Company shall not use and shall not
permit a sublicensee to use any such trademarks, names, or identities without the
University’s and, as the case may be, such member’s prior written approval.


 


6

















 


6.             Payments, Reimbursements, Reports, and Records.


 


6.1.          Payments. The Company shall deliver to the University the payment or payments specified
in section 6 of attached Schedule A. The Company shall make such payments by check,
wire transfer, or any other mutually agreed-upon and generally accepted method
of payment. All checks to the University shall be made payable to “Regents of
the University of Minnesota” and shall be mailed to the address specified in
article 21 of this Agreement. Upon request, the University shall deliver to the
Company written wire transfer instructions.


 


6.2.          Sales Reports. Within sixty (60) days after the last day
of a calendar quarter during the term of this Agreement and the
Post-termination Period, the Company shall deliver to the University a written
sales report (a copy of the form of which is attached as Exhibit B) recounting
the number and Net Sales Price amount (expressed in U. S. dollars) of all
sales, leases, or other dispositions of Licensed Products, whether made by the
Company or a sublicensee, and all Sublicense Income received, during such calendar
quarter. The Company shall deliver such written report to the University even
if the Company is not required hereunder to pay to the University a payment for
sales, leases, or other dispositions of Licensed Products during the calendar
quarter. It is understood that the Company may withhold taxes due as required
by foreign governments.


 


6.3.          Records Retention and Audit Rights.


 


6.3.1.       Throughout
the term of this Agreement and the Post-termination Period and for five (5)
years thereafter, the Company, at its expense, shall keep and maintain and
shall cause each sublicensee and each non affiliated third party that
manufactures, sells, leases, or otherwise disposes of Licensed Products on
behalf of the Company to keep and maintain complete and accurate records of all
sales, leases, and other dispositions of Licensed Products during the term of
this Agreement and the Post-termination Period for a period of seven (7) years
after the calendar quarter in which the sale, lease or other disposition
occurred.


 


6.3.2.       The
University, at its expense except as set forth below in this subsection, shall
have the right to select an independent, nationally or regionally recognized
auditor to inspect and audit the Company’s records referred to in subsection
6.3.1 hereof at the Company’s address as set forth in article 21 of this
Agreement or such other locations as the parties shall mutually agree during
the Company’s normal business hours no more than once per year. The University
shall have the right to determine the Company’s compliance with the payment
terms set forth in Section 6.1 of this Agreement. The Company shall reimburse
the University for all its out-of-pocket expenses to inspect and audit such
records if the independent auditor, in accordance with the results of such inspection
and audit, determines that the Company has underpaid amounts owed to the University
by at least ten percent (10%) in a reporting period. The Company shall cause each
sublicensee that manufactures, sells, leases, or otherwise disposes of Licensed
Products on behalf of the Company to grant the University a right to inspect
and audit the sublicensee’s records substantially similar to the rights granted
the University in this


 


7

















 


subsection.
In connection with, and prior to the commencement of, an audit, the Company, University
and the independent auditor shall enter into an agreement prohibiting the
auditor and the University from disclosing the Company’s nonpublic, proprietary
information to any third party (including in the case of the independent
auditor to the University) without the Company’s prior written consent;
provided, however, that consistent with generally accepted auditing standards
and the independent auditor’s professional judgment, the independent auditor
may disclose the result of the audit to the University and its agents, counsel,
or consultants. The Company acknowledges that such an agreement is adequate to
protect its legitimate interests, and the parties agree that there shall be no
additional nondisclosure agreement demanded as a condition to the commencement
of an audit and the University’s exercising its rights under this subsection.


 


6.4.          Currency and Checks.   All
computations and payments made under this Agreement shall be in United States
dollars. The exchange rate for the currency into dollars as reported in the Wall Street Journal as the New York foreign exchange
mid-range rate on the last business day of the month in which the transaction
was entered into shall be used for determining the dollar value of transactions
conducted in non-United States dollar currencies.


 


7.             Infringement.


 


7.1.          Third-Party Infringement of a Licensed Patent.


 


7.1.1.       Notice
of Third Party’s Infringement.
In the event a party learns of substantial, credible evidence that a third
party is making, using, or selling a product in a Field of Use in the Territory
that infringes a Licensed Patent in the Field of Use, the party shall notify the
other party. During the term of this Agreement only, the Company shall have a
right to institute a suit against this and any other third party alleged to be infringing
a Licensed Patent in the Field of Use as provided in subsections 7.1.2 – 7.1.6.


 


7.1.2.       Legal
Action of Company. The
Company shall have the initial right, but not the obligation, to institute, prosecute,
defend and control any action, suit or proceeding (an “Action”) with respect to
alleged infringement that includes infringing activities within the Field of
Use or with respect to attempts to invalidate or render unenforceable any such
rights licensed hereunder, including any declaratory judgment action or
litigation, at its expense. The Company shall be entitled to use counsel of its
choice (but reasonably acceptable to the University) and shall consult with and
keep the University informed of the progress of the Action. Prior to filing
suit, the Company shall notify the University of such proposed action and shall
deliver to University a copy of the proposed Summons and Complaint. The
University shall cooperate reasonably with the Company, at the Company’s
request, in connection with any such Action. The Company will not settle any
such Action in a manner that materially adversely affects the University’s
interest in the Licensed Patents or under this Agreement without the University’s
prior written consent, such consent not to be unreasonably withheld. In the event
that the Company has not instituted an Action against a third party infringing
a Valid Claim in a Licensed Patent within six (6) months of receipt of notice
from the


 


8

















 


University
in accordance with Section 7.1.1, the University shall have the right to institute,
prosecute, defend and control its own Action with respect to the alleged infringement.


 


7.1.3.       Joint
Legal Action. If the Company
elects not to institute an Action in accordance with subsection 7.1.2 and the
University and the Company so agree, they may institute suit jointly. If so,
they will:


 


(A)          Prosecute
the Action in both their names;


 


(B)           Agree
how they will bear the out-of-pocket costs;


 


(C)           Agree
how they will share any recovery or settlement; and


 


(D)          Agree
how they will exercise control over the Action.


 


The parties’ rights and obligations under this
subsection shall expire 30 days after the expiration of the Company’s rights
under subsection 7.1.2 above.


 


7.1.4.       Legal
Action of the University. If
neither subsections 7.1.2 nor 7.1.3 apply, the University may institute suit.
If the University decides to institute suit, it will notify the Company in
writing. If the Company does not notify the University in writing that it
desires to jointly prosecute the suit within 15 days after the date of the
notice, the Company will assign and hereby does assign to the University all
rights, causes of action, and damages resulting from the alleged infringement.
The University will bear the entire cost of the litigation and will retain the
entire amount of any recovery or settlement.


 


7.1.5        Recovery. If the Company sues under subsection 7.1.2,
then any recovery in excess of any unrecovered litigation costs and fees will
be shared with the University as follows:


 


(A)          Any
payment for past sales under the Licensed Patent will be deemed Net Sales
Price, and the Company will pay the University royalties at the rates specified
in section 6.1; and


 


(B)           Any
payment for future sales will be deemed a payment under a sublicense, and sales
of any products licensed under the Licensed Patent could be deemed Sublicense
Income, and the Company will pay the University royalties at the rates
specified in section 6.1.


 


7.1.6.       Abandonment
of Suit.   If either the University or the Company commences
a suit and then wants to abandon the suit, it will give timely notice to the other
party.


 


9

















 


8.             Termination.


 


8.1.          By the University.


 


8.1.1.       If the
Company materially breaches or fails to perform one or more of its material
duties under this Agreement, the University may deliver to the Company a written
notice of default. The University may terminate this Agreement by delivering to
the Company a written notice of termination if the default has not been cured
in full within sixty (60) days of the delivery to the Company of the notice of
default.


 


8.1.2.       The
University may terminate this Agreement by delivering to the Company a written
notice of termination at least thirty (30) business days prior to the date of
termination if the Company (i) becomes insolvent; (ii) voluntarily files or has
filed against it a petition under applicable bankruptcy or insolvency laws that
the Company fails to have released within thirty (30) days after filing; (iii)
proposes any dissolution, composition, or financial reorganization with
creditors or if a receiver, trustee, custodian, or similar agent is appointed;
or (iv) makes a general assignment for the benefit of creditors.


 


8.2.          By the Company. The Company may terminate this Agreement at
any time by delivering to the University a written notice of termination at
least sixty (60) days prior to the effective date of termination.


 


8.3.          Post-termination Period.


 


8.3.1.       The
Company shall not use, or permit others to use, the Licensed Technology or
manufacture or have manufactured Licensed Products after the termination of
this Agreement under Section 8.1 or 8.2, provided that there is at least one
Valid Claim in the Field of Use in the Licensed Patents as of the date of such
termination. In the event that the Company terminates this Agreement in
accordance with Section 8.2 and there is at least one Valid Claim in the Field
of Use in the Licensed Patents as of the date of such termination, the Company
may offer to sell and sell, offer to lease and lease, and otherwise offer to
dispose of or dispose of Licensed Products in the Territory that were
manufactured prior to the termination or the expiration of this Agreement. After
termination of this Agreement under section 8.1, the Company shall not offer to
sell or sell, offer to lease or lease, or otherwise offer to dispose of or
dispose of a Licensed Product in the Territory for so long as there is at least
one Valid Claim in the Field of Use in the Licensed Patents.


 


8.3.2.       Upon
termination of this Agreement, provided that there is at least one Valid Claim
in the Field of Use in the Licensed Patents as of the date of such termination,
for whatever reason, the Company shall grant the University an option to
assume, under an assignment, all the Company’s future titles, rights, and
obligations under the sublicenses granted under this Agreement. The option
shall expire sixty (60) days after the date of grant. The University may exercise
the option by delivering written notice of exercise to the Company during the
exercise period. The University shall have no obligation to pay the Company any
amount in consideration for granting or exercising of the option.


 


10

















 


8.3.3.       Upon
termination of this Agreement, provided that there is at least one Valid Claim
in the Field of Use in the Licensed Patents as of the date of such termination,
for whatever reason, the sublicenses granted by the Company shall terminate;
and the Company shall deliver to the University a true, correct, and complete
list identifying each sublicensee and describing the terms of each sublicense,
including the royalty rates and other financial terms, milestones, and other material
terms; and shall cooperate in the University’s efforts to enter into licenses
or other forms of agreement with the sublicensees. The University shall offer
to grant each such sublicensee a similar license on substantially equal
financial and other material terms.


 


9.             Release, Indemnification, and
Insurance.


 


9.1.          The Company’s Release. For itself and its employees, the Company
hereby releases the University and its regents, employees, and agents forever
from any and all suits, actions, claims, liabilities, demands, damages, losses,
or expenses (including reasonable attorneys’ and investigative expenses)
relating to or arising out of (i) the manufacture, use, lease, sale, or other
disposition of a Licensed Product; or (ii) the assigning or sublicensing of the
Company’s rights under this Agreement.


 


9.2.          The Company’s Indemnification. Throughout the term of this Agreement and thereafter,
the Company shall indemnify, defend, and hold the University and its regents, employees,
and agents harmless from all third party suits, actions, claims, liabilities,
demands, damages, losses, or expenses (including reasonable attorneys’ and
investigative expenses), relating to or arising out of the manufacture, use,
lease, sale, or other disposition of a Licensed Product, including, without
limitation, breach of contract and warranty and products-liability claims
relating to a Licensed Product and claims brought by a sublicensee.


 


9.3.          The University’s Indemnification. Subject to the limitations on liability set
forth in article 11 of this Agreement, throughout the term of this Agreement
and thereafter, the University shall indemnify, defend, and hold the Company
and its directors, employees, and agents harmless from all third party suits,
actions, claims, liabilities, demands, damages, losses, or expenses (including
reasonable attorneys’ and investigative expenses) relating to or arising out of
the University’s breach of the express warranties set forth in sections 10.1
and 10.2 of this Agreement.


 


9.4.          The Company’s Insurance.


 


9.4.1.       Throughout
the term of this Agreement, or during such period as the parties shall agree in
writing, the Company shall maintain, and shall cause each sublicensee to
maintain, in full force and effect comprehensive general liability (CGL) insurance,
with single claim limits of $1,000,000. Such insurance policy shall name the University
as an additional insured if the University so requests in writing. Company shall
deliver written notice to the University at the address set forth in article 21
of this Agreement, at least thirty (30) days prior to the termination of the
policy. Upon receipt


 


11

















 


of
the University’s written request, the Company shall deliver to the University a
copy of the certificate of insurance for such policy.


 


9.4.2.       The
provisions of subsection 9.4.1 of this Agreement shall not apply if the University
agrees in writing to accept the Company’s or a sublicensee’s, as the case may be,
self-insurance plan as adequate insurance.


 


9.5.          Sublicensees - Release. The Company shall cause each sublicensee to
grant the University a release from liabilities substantially similar to the
release granted in favor of the University in section 9.1 of this Agreement.


 


10.           Warranties.


 


10.1.        Authority. Each party
represents and warrants to the other party that it has full corporate power and
authority to execute, deliver, and perform this Agreement, and that no other corporate
proceedings by such party are necessary to authorize the party’s execution or delivery
of this Agreement.


 


10.2.        Exclusive Rights. The
University warrants that except for the rights of the federal government as
described in section 3.2 of this Agreement, to the best of its knowledge, the
University owns or has acquired the exclusive rights (including all patent and
other intellectual property rights) in the Licensed Technology, Licensed
Patent, and Patent Application.


 


10.3.        Disclaimers.


 


10.3.1.     EXCEPT
FOR THE EXPRESS WARRANTIES SET FORTH IN SECTIONS 10.1 AND 10.2 OF THIS
AGREEMENT, EACH PARTY DISCLAIMS AND EXCLUDES ALL WARRANTIES, EXPRESS AND
IMPLIED, CONCERNING THE LICENSED TECHNOLOGY, EACH LICENSED PATENT, EACH PATENT
APPLICATION, AND EACH LICENSED PRODUCT, INCLUDING, WITHOUT LIMITATION,
WARRANTIES OF NON-INFRINGEMENT AND THE IMPLIED WARRANTIES OF MERCHANTABILITY
AND FITNESS FOR A PARTICULAR PURPOSE.


 


10.3.2.     The
University expressly disclaims any warranties concerning and makes no
representations:


 


(i)            that
the Patent Applications will be approved or that a patent will issue;


 


(ii)           concerning
the validity or scope of any Licensed Patent; or


 


(iii)          that
the manufacture, use, sale, lease or other disposition of a Licensed Product
will not infringe a third party’s patent or violate its intellectual property
rights.


 


12

















 


10.4.        Sublicensees - Warranties. The Company shall cause each sublicensee to give the University
warranties and disclaimers and exclusions of warranties substantially similar
to the warranty and disclaimers and exclusions of warranties in favor of the
University in section 10.1 and subsections 10.3.1 and 10.3.2 of this Agreement.


 


11.           Damages.


 


11.1.        Remedy Limitation. EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, IN NO EVENT SHALL
THE UNIVERSITY BE LIABLE FOR (A) PERSONAL INJURY OR PROPERTY DAMAGES OR (B)
LOST PROFITS, LOST BUSINESS OPPORTUNITY, INVENTORY LOSS, WORK STOPPAGE, LOST
DATA OR ANY OTHER RELIANCE OR EXPECTANCY, DIRECT OR INDIRECT, SPECIAL,
INCIDENTAL OR CONSEQUENTIAL DAMAGES, OF ANY KIND.


 


11.2.        Damage Cap. IN NO EVENT SHALL THE UNIVERSITY’S TOTAL LIABILITY FOR THE BREACH OR
NONPERFORMANCE OF THIS AGREEMENT EXCEED THE AMOUNT OF PAYMENTS PAID TO THE
UNIVERSITY UNDER SECTION 6.1 OF THIS AGREEMENT. THIS LIMITATION SHALL APPLY TO
CONTRACT, TORT, AND ANY OTHER CLAIM OF WHATEVER NATURE.


 


11.3.        Sublicensees - Damages.
The Company shall cause each sublicensee to agree to limitations of remedies
and damages substantially similar to the limitations of remedies and damages
set forth in sections 11.1 and 11.2 of this Agreement.


 


12.           Amendment and Waiver.
This Agreement may be amended from time to time only by a written instrument
signed by the parties. No term or provision of this Agreement shall be waived
and no breach excused unless such waiver or consent shall be in writing and
signed by the party claimed to have waived or consented. No waiver of a breach
shall be deemed to be a waiver of a different or subsequent breach.


 


13.           Assignment. Except
as provided in subsections 3.1.2 and 3.1.3 of this Agreement, the Company shall
not assign or sublicense its interest or delegate its duties under this
Agreement, unless the University consents to the assignment, sublicense, or
delegation. Any assignment, sublicense, or delegation attempted to be made in
violation of this article shall be void. Absent the consent of all the parties
to this Agreement, an assignment or delegation shall not release the assigning
or delegating party from its obligations under this Agreement.


 


This
Agreement shall inure to the benefit of the Company and the University and
their respective permitted sublicensees and trustees.


 


14.           Applicable Law. The
internal laws of the state of Minnesota shall govern the validity, construction,
and enforceability of this Agreement, without giving effect to the conflict of
laws principles thereof.


 


13

















 


15.           Confidentiality; Access to University Information.


 


15.1.        The parties acknowledge that the University is subject to the terms and
provisions of the Minnesota Government Data Practices Act, Minnesota Statutes §13.01
et seq. (the “Act”), and that the Act
requires, with certain exceptions, the University to permit the public to
inspect and copy any information that the University shall have collected,
created, received, maintained, or disseminated.


 


15.2.        Subject to the terms of section 15.3 below, the University shall hold
in confidence and disclose only to University employees who need (and are under
substantially similar obligations of non-disclosure and non-use) to know the
information, data and materials provided by the Company including, without
limitation, reports described in section 5.3 and 6.2 of this Agreement and
section 7 of attached Exhibit A, and the records inspected pursuant to section
6.3 of this Agreement (“Company Information”). Company Information shall not be
protected from use or disclosure under this Agreement to the extent that the
information, data and materials (a) is in the recipient’s possession prior to
receipt by the University as demonstrated by contemporaneous documentation; (b)
is or becomes, through no fault of the University or its employees, publicly
known; (c) is furnished to the University by a third party without breach of a duty
to the disclosing Party; or (d) is independently developed by the University
without use of, application of or reference to the Company Information as
demonstrated by contemporaneous documentation. The University shall not use
Company Information except in performance of its obligations or exercise of its
rights under this Agreement. No provision of this Agreement shall further
prohibit, limit, or condition the University’s right to use and disclose any
information in connection with enforcing this Agreement, in court or elsewhere.


 


15.3.        It shall not be a violation of this article 15 to disclose Company
Information required to be disclosed under applicable law including, without
limitation, the Act, but such disclosure shall be only for the sole purpose of
and solely to the extent required by such law, and provided that the
University, to the extent possible, shall give the Company prior written notice
of the proposed disclosure and cooperate fully with the Company to minimize the
scope of any such required disclosure, to the extent possible and in accordance
with applicable law.


 


16.           Consent and Approvals.
Except as otherwise expressly provided, all consents or approvals required
under the terms of this Agreement shall be in writing and shall not be unreasonably
withheld or delayed.


 


17.           Construction. The
headings preceding and labeling the sections of this Agreement are for the
purpose of identification only and shall not in any event be employed or used
for the purpose of construction or interpretation of any portion of this
Agreement. As used herein and where necessary, the singular shall include the
plural and vice versa, and masculine, feminine, and neuter expressions shall be
interchangeable.


 


18.           Enforceability. If a
court of competent jurisdiction adjudges a provision of this Agreement
unenforceable, invalid, or void, such determination shall not impair the
enforceability of any of the remaining provisions hereof and such provisions
shall remain in full force and effect.


 


14

















 


19.           Entire Agreement; No Third-Party Beneficiaries. This Agreement (including all attachments,
exhibits, and amendments hereto) is intended by the parties as the final and
binding expression of their contract and agreement and as the complete and exclusive
statement of the terms thereof. This Agreement cancels, supersedes, and revokes
all prior negotiations, representations and agreements among the parties,
whether oral or written, relating to the subject matter of this Agreement.


 


No
provision of this Agreement, express or implied, is intended to confer upon any
person other than the parties to this Agreement any rights, remedies,
obligations, or liabilities hereunder. No sublicensee shall have a right to
enforce or seek damages under this Agreement.


 


20.           Language and Currency.
Unless otherwise expressly provided in this Agreement, all notices, reports,
and other documents and instruments that a party hereto elects or is required
by the terms of this Agreement to deliver to the other party hereto shall be in
English, and all notices, reports, and other documents and instruments
detailing revenues and earned under this Agreement or expenses chargeable to a
party hereto shall be United States dollar denominated.


 


21.           Notices. All
notices, requests, and other communications that a party is required or elects to
deliver shall be in writing and shall be delivered personally, or by facsimile
or electronic mail (provided such delivery is confirmed), or by a recognized
overnight courier service or by United States mail, first-class, certified or
registered, postage prepaid, return receipt requested, to the other party at
its address set forth below or to such other address as such party may
designate by notice given pursuant to this article:


 


	
  If
  to the University:

  	
  Office
  for Technology Commercialization

  
	
   

  	
  University
  of Minnesota

  
	
   

  	
  Attn:
  Executive Director

  
	
   

  	
  1000
  Westgate Drive, Suite 160

  
	
   

  	
  Saint
  Paul, MN 55114-8658

  
	
   

  	
  Facsimile
  No.: (612) 624-6554

  
	
   

  	
  E-mail:
  umotc@umn.edu

  
	
   

  	
   

  
	
  For
  notices sent pursuant to article 8, with a copy to:

  	
  University
  of Minnesota

  
	
   

  	
  Office
  of the General Counsel

  
	
   

  	
  Attn:
  Transactional Law Services Group

  
	
   

  	
  360
  McNamara Alumni Center

  
	
   

  	
  200
  Oak Street S.E.

  
	
   

  	
  Minneapolis,
  MN 55455-2006

  
	
   

  	
  Facsimile
  No.: (612) 626-9624

  
	
   

  	
  E-mail:
  contracts@mail.ogc.umn.edu

  
	
   

  	
   

  
	
  If
  to the Company:

  	
  XDx
  Inc.

  
	
   

  	
  Attn:
  Chief Financial Officer

  
	
   

  	
  3260
  Bayshore Blvd.

  
	
   

  	
  Brisbane,
  CA 94005

  
	
   

  	
  Facsimile
  No.: (415) 287-2461

  
	
   

  	
  E-mail:
  vjog@xdx.com

  



 


15

















 


22.           Publicity. The
University reserves the right to disclose to the public the execution and delivery
of this Agreement along with the Company’s name and a description of the
Licensed Technology, provided that such disclosure shall be subject to the
Company’s consent not to be unreasonably withheld. The parties shall cooperate
with each other so that each party may issue a press release regarding this
Agreement, provided that neither party, except as required by law, may release
any such press release or other publicity without the prior written approval of
the other party such approval not to be unreasonably withheld.


 


23.           Relationship of Parties. In entering into, and performing their duties under, this Agreement,
the parties are acting as independent contractors and independent employers. No
provision of this Agreement shall create or be construed as creating a
partnership, joint venture, or agency relationship between the parties. No
party shall have the authority to act for or bind the other party in any
respect.


 


24.           Survival.
Immediately upon the termination or expiration of this Agreement, except for certain
rights granted for the Post-termination Period described above in section 8.3,
all the Company’s rights under this Agreement shall terminate; provided,
however, the Company’s obligations that have accrued prior to the effective
date of termination or expiration of this Agreement (e.g.,
the obligation to report and make payments on sales, leases, or dispositions of
Licensed Products and to reimburse the University for costs) and the
obligations specified in sections 6.1 and 6.2 of the Agreement shall survive.
The obligations and rights set forth in sections 6.4 and 8.3 and articles 9,
10, 11, and 15 of this Agreement shall survive the termination or expiration of
this Agreement.


 


25.           Collection Costs and Attorneys’ Fees. If a party shall fail to perform an obligation or otherwise breaches
one or more of the terms of this Agreement, the other party may recover from the
non-performing breaching party all its costs (including actual attorneys’ and
investigative fees) to enforce the terms of this Agreement.


 


26.           Dispute Resolution.


 


26.1.        Dispute Resolution by Arbitration. Any dispute arising out of or related to this Agreement shall, in the
first instance be the subject of a meeting between the Company and the University
to negotiate in good faith a resolution of such dispute. The meeting shall be
attended by representatives or agents of the Company and the University who
have decision-making authority with respect to the matter in question within
sixty (60) days. Should the negotiations not lead to a settlement of the
dispute within thirty (30) days of the date of the meeting, the Company and the
University agree to binding arbitration in accordance with the Licensing Agreement
Arbitration Rules of the American Arbitration Association. (AAA).


 


26.2.        Request for Arbitration.
Either the Company or the University may request such arbitration. The Company
and the University will mutually agree in writing on a third party arbitrator
within thirty (30) days of the arbitration request. The arbitrator’s decision
will be final and non-appealable and may be entered in any court having
jurisdiction.


 


16

















 


26.3.        Discovery. The
Company and the University will be entitled to discovery as if the arbitration
were a civil suit in the United States District Court for the Northern District
of Illinois. The arbitrator may limit the scope, time, and issues involved in
discovery.


 


26.4.        Place of Arbitration.
The arbitration will be held in Chicago, Illinois unless the parties mutually
agree in writing to another location.


 


27.           Force Majeure.


 


Neither
party will be liable to the other for failure or delay in performing its
obligations hereunder if such failure or delay is due to an Event of Force
Majeure and such failure or delay shall not be a breach of this Agreement. In
the event that a party is delayed or fails to perform its obligations hereunder
due to an Event or Force Majeure, the party shall inform the other party of the
nature of the Event of Force Majeure and shall promptly resume its performance
of such obligations upon cessation of the Event of Force Majeure.


 


IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed by their
respective authorized representatives.


 


	
  Regents
  of the University of Minnesota

  	
  Expression
  Diagnostics

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  
	
  By:

  	
  /s/
  Michael F. Moore

  	
   

  	
  By:

  	
  /s/
  Vikram Jog

  	
   

  
	
   

  	
  Michael
  F. Moore

  	
   

  	
  Vikram
  Jog

  
	
   

  	
  Director,
  Health Technologies

  	
   

  	
  Chief
  Financial Officer

  
	
   

  	
  Office
  for Technology Commercialization

  	
   

  	
  XDx
  Inc.

  
							



 


17

















*** Confidential material redacted and filed separately with the
Commission.


 


[LOGO]


 


	
   

  	
  Shaded Area - Internal University Use Only

  
	
   

  	
  OTC
  Agreement
  No.:                                   

  
	
   

  	
  OTC
  Docket No.(s): Z02092, Z05055

  



 


Exhibit A


 


1.             Federal Government Rights (section 3.2):


 


The
University acknowledges that, to the best of its knowledge, the federal
government of the United States of America, pursuant to one or more grants and
attendant law and regulations, paid for some or all or of the cost to develop
the Licensed Technology and has certain rights in and to the Licensed
Technology.


 


2.             Patents and Patent Applications (sections 1.7 and 1.10):


 


(a)           Patents issued prior to the date of this Agreement:


 


US
Patent 7,118,865 entitled “Methods for Diagnosing Severe Systemic Lupus Erythematosus”
and issued on October 10, 2006.


 


(b)           Patent Applications submitted prior to and pending as of the date of
this Agreement:


 


***


 


3.             Fields of Use and Territory (sections 1.2 and 1.16):


 


(a)           Fields
of Use: Any and all research, prognostic and diagnostic uses for the medical
management of a human being. For clarification purposes, the Field of Use shall
not include use of gene expression sequences included in the Licensed Technology
as therapeutic targets, for example for the development of novel drug entities.


 


(b)           Territory:
Worldwide.


 


A-1

















 


4.             Sublicense Rights (subsection 3.1.2):


 


The
Company may sublicense its rights under this Agreement subject to sublicense payments
described in provision 6 of this Exhibit A.


 


5.             Commercialization Reports (section 5.3):


 


Within
thirty (30) days after each calendar year after the Effective Date of this Agreement,
the Company shall deliver to the University the report described in section 5.3
of the Agreement.


 


6.             Payments (section 6.1):


 


a.             Patent Cost Reimbursement. The Company shall reimburse the University
for paying all reasonable and necessary costs (including attorneys’ and application
fees) incurred prior to or on the Effective Date to apply for, prosecute, and
maintain each Licensed Patent and Patent Application unless otherwise provided
in this Exhibit A. Within 30 days after the Effective Date, the Company shall
pay to the University *** dollars ($***). Within 30 days of its receipt of the
University’s invoice for the balance of such costs, the Company shall pay such invoice.
This payment shall be non-refundable and not creditable against future royalty
obligations. Thereafter, the Company shall reimburse the University, within 30
days of its receipt of the University’s invoice, for paying all reasonable and
necessary costs (including attorneys’ and application fees) incurred after the
Effective Date to apply for, prosecute, and maintain each Licensed Patent and
Patent Application except to the extent that the Company has elected to not pay
for the filing, preparation, prosecution and maintenance of such Licensed
Patent or Patent Application in accordance with section 4.1.2 of the Agreement.


 


b.             Simple Running Royalty Payments. Within thirty (30) days after the last day
of each calendar quarter during the term of this Agreement and the Post-termination
Period, the Company shall pay to the University a royalty of ***% of the Net
Sales Price of Licensed Products sold, leased or otherwise disposed of by the
Company and its sublicensees during such quarter, provided the Licensed Product
was manufactured during the term of this Agreement.


 


c.             Sublicense Income Payments. Within thirty (30) days after the last day
of each calendar quarter during the term of this Agreement and the
Post-termination Period, the Company shall pay to the University ***% of all
Sublicense Income earned in such quarter. In addition, the Company shall cause ***
percent (***%) of the total number of shares of stock or other forms of equity
issued in connection with, and as compensation for, granting a third party
sublicense rights under this Agreement to be issued to the University. The
payments made under this section 6(d) shall not be creditable against the
Company’s other royalty obligations.


 


A-2

















 


d.             Other Payments. Within thirty (30) days of the First
Commercial Sale of a Licensed Product, the Company shall pay to the University ***
Dollars ($***). Such payment shall be non-refundable and shall not be
creditable against the Company’s other financial obligations.


 


7.             Performance Milestones (section 5.1):


 


***


 


8.             Other Terms:


 


Independent Patent Improvements.


 


The University grants the Company a nontransferable
option to license on the terms set forth in section 3.1 of this Agreement (as
limited by the terms of sections 3.2 and 3.3 of this Agreement) any Independent
Patent Improvements. The University shall promptly deliver to the Company
written notice of the disclosure to it of an Independent Patent Improvement.
The Company’s option to license the Independent Patent Improvement shall
expire, without further action, six (6) months after its receipt of such written
notice. If the Company exercises its option, the parties shall abide by the
terms of section 4 in applying for and maintaining patent protection for the Independent
Patent Improvement, and the parties shall amend the terms of section 2 of
Exhibit A of this Agreement and such other terms of this Agreement as they believe
reasonable and necessary to record their agreement as to the Company’s
licensing of the University’s rights in the Independent Patent Improvement. In
the event that the University and the Company arc unable to agree upon such
other terms of this Agreement as they believe reasonable and necessary within
four (4) months after the Company’s exercise of this option (provided that such
four (4) month period shall automatically be extended to six (6) months in the
event that Company is still participating in negotiations at the end of the initial
four (4) month period), the University shall be free to discuss terms and
conditions for granting of rights and licenses with respect to such Independent
Patent Improvement with any third party without further obligations to the
Company.


 


A-3

















 


[LOGO]


 


	
   

  	
  Shaded
  Area - Internal University Use Only

  
	
   

  	
   

  
	
   

  	
  OTC
  Agreement No.:

  
	
   

  	
   

  
	
   

  	
  OTC
  Docket No.(s):

  



 


Exhibit B


 


Royalty Report Form


 


Date


 


	
   

  	
  ** EXAMPLE ONLY **

  
	
   

  	
  FORM WILL BE SENT

  
	
   

  	
  TO COMPANY EACH PERIOD

  
	
   

  	
  FOR COMPLETION

  



 


Company
Name & Address


 


License
Number
                                             


 


Reporting
Period:                                                               Report Due Date:                         


 


This
report must be submitted regardless of whether royalties are owed.


Please
do not leave any column blank. State all information requested below.


 


	
  U of M 

  Docket #

  	
   

  	
  Product Description

  	
   

  	
  Royalty Rate

  	
   

  	
  Quantity/

  Net Sales

  	
   

  	
  Royalty Due

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  



 


	
  Report
  Completed by:

  	
  Total
  Royalties Due:

  



 


 


Telephone
Number:                                                     


 


	
  If
  you have questions please contact:

  	
  Sharyl
  Stuber

  	
   

  
	
   

  	
  612-625-4537

  	
   

  
	
   

  	
  lowin001@umn.edu

  	
   

  



 


Please
make check payable to: Regents of the University of Minnesota


 


B-1