exv10w16



 





Exhibit 10.16




*** Text Omitted and Filed Separately

Confidential Treatment Requested

Under 17 C.F.R. §§ 200.80(b)(4)

and 230.406





License Agreement




     This license agreement (“Agreement”) effective as of this 1st day of January, 2006
(“Effective Date”) is by and between Northwestern University, with offices at Rebecca Crown Center
2-223, 633 Clark St., Evanston, IL 60208-1108 (“Northwestern”), and Nanosphere, Inc., an Illinois
corporation with principal offices at 4088 Commercial Avenue, Northbrook, IL 60062 (“Nanosphere”).



Background




     Northwestern and Nanosphere are parties to a License Agreement (“Original License”) and
an Equity Investment License Commitment, each dated May 10, 2000, relating to certain patent rights
and technical information for biological diagnostics involving nanoparticles developed by or under
the supervision of Chad A. Mirkin or Robert L. Letsinger at Northwestern.



     Northwestern and Nanosphere now wish to modify their prior relationship by entering into this
Agreement to replace and supersede the Original License and Equity Investment License Commitment in
accordance with the terms and conditions set forth below.



     The parties agree as follows:



1. Definitions




     1.1 “Affiliate” of a party means any entity that directly or indirectly owns or controls,
is owned or controlled by, or is under common ownership or control with a party. For the purposes
of this definition, “ownership” or “control” mean: (a) possession, or the right to possession, of
at least 50% of the voting stock of the entity; (b) the power to direct the management and policies
of the entity; (c) the power to appoint or remove a majority of the board of directors of the
entity; or (d) the right to receive 50% or more of the profits or earnings of the entity.



     1.2 “Biobarcode Technology” means analysis where oligonucleotides act as surrogate targets or
reporter molecules.



 









 





     1.3 “Biodiagnostics Field” means the qualitative or quantitative in vitro analysis, testing,
measurement, or detection of the following specific field subset and target combinations (including
products that incorporate in vivo harvesting of test samples for ex vivo testing):



	 	 	 
	Biodiagnostics Field Subsets	 	Targets
	Human and animal testing
(Includes pharmaceutical
and biotechnology discovery
and development)

	 	Nucleic acids, proteins, peptides, amino
acids, metabolites, therapeutic drugs, drugs
of abuse, hormones, sugars, lipids and
lipoproteins
	Plants

	 	Nucleic acids, proteins, peptides, phytotoxins
	Environmental

	 	Pathogens, toxins and biological contaminants






The Biodiagnostics Field excludes the following subject matter and all Biodiagnostics Field
applications thereof:



          (a) therapeutics (including in vitro and in vivo therapy and controlling, modulating, or
otherwise affecting gene expression);



          (b) technology relating to or derived from dip-pen nanolithography;



          (c) environmental applications other than as set forth above;



          (d) prismatic particles (including methods of manufacture and uses thereof); and



          (e) coordination polymers (including methods of manufacture and uses thereof).



For purposes of clarity, other than with respect to Biobarcode Technology or an Invention where the
Licensed Product itself is the surrogate for the target listed above, the term “detection” means
the detection of the actual target listed above and not the detection of a surrogate, not listed
above, for the target.



     1.4 “Confidential Information” means Nanosphere Confidential Information, Northwestern
Confidential Information, and any other information expressly stated in this Agreement to be
confidential information.



     1.5 “Gross Profits” means the gross invoiced price for Licensed Products sold by Nanosphere,
its Affiliates or sublicensees to a Third Party less: (a) documented customary trade, quantity and
cash discounts actually given; (b) returns, rebates, credits and allowances actually granted; (c)
shipping, transportation, and insurance, if charged separately; (d) taxes or other governmental
charges (value-added taxes) imposed on such sale and actually paid; (e) royalties paid to any Third
Party for intellectual property reasonably deemed necessary by Nanosphere for the manufacture, sale
or use of Licensed Products; and (f) documented, actual Manufacturing Cost of the manufacture of
the Licensed Products sold, if manufactured by Nanosphere, its Affiliates or sublicensees or the
amounts paid to a Third Party manufacturer if manufactured by a Third Party. Gross Profits accrue
upon receipt of payment for the invoiced amount. Any amounts received on account of transfers of
Licensed Product between Nanosphere, its Affiliates or sublicensees will be excluded from the
calculation of Gross Profits,



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and Gross Profits will be calculated based on the final sale of such Licensed Products by
Nanosphere, its Affiliates or sublicensees to any Third Party unless such Affiliate or sublicense
is the end user, in which case, Gross Profits shall accrue on transfer to such Affiliate or
sublicensee at the then-current fair market value.



     1.6 “Invention(s)” means an invention in the Biodiagnostics Field: (a) submitted to
Northwestern in the form of an invention disclosure; (b) owned and controlled by Northwestern; (c)
developed in the laboratory of Chad A. Mirkin or Robert L. Letsinger; and (d) by or under the
direct supervision of Chad A. Mirkin or Robert L. Letsinger.



     1.7 “Joint Patent Rights” means: (a) those patents and patent applications listed in Exhibit
A; (b) all divisionals, continuations, continuations-in-part (but only to the extent that they
claim subject matter that is disclosed in the patents and applications listed in Exhibit A
sufficiently to fully support such claims under 35 U.S.C. §112), reexaminations, and reissues, and
foreign counterparts of the patents and patent applications listed in Exhibit A; (c) all patents
issuing from the patents and patent applications referenced in clauses (a) and (b); and (d) any
extensions of or supplementary protection certificates allowed on any of the foregoing.



     1.8 “Licensed Product(s)” means individually or collectively, depending on the specificity of
the reference, any product or process: (a) that is covered by a Valid Claim, infringes a Valid
Claim, or would infringe but for the exception in 35 U.S.C. §271(e)(1), or similar exception in the
U.S. or other countries; (b) the development, manufacture, use, sale, or importation of which
incorporates, uses, or is derived from Technical Information; or (c) meeting the qualifications of
both (a) and (b).



     1.9 “Manufacturing Cost” means Nanosphere’s fully-absorbed standard manufacturing cost,
determined in accordance with Generally Accepted Accounting Principles, including material, direct
labor, manufacturing overhead and yield losses. Manufacturing overhead includes expenses directly
related to improving and/or enhancing performance specifications, quality, reliability, lifetime
and/or usability of manufactured product and allocated to Licensed Products on a prorata basis.



     1.10 “Nanoparticle Technology” means any technology in the Biodiagnostics Field involving a
particle where no single dimension is greater than 100 nm.



     1.10 “Nanosphere Confidential Information” is defined in Section 6.1.



     1.11 “Nanosphere Patent Rights” means: (a) those patents and patent applications listed in
Exhibit B; (b) all divisionals, continuations, continuations-in-part (but only to the extent that
they claim subject matter that is disclosed in the patents and applications listed in Exhibit B
sufficiently to fully support such claims under 35 U.S.C. §112), reexaminations, and reissues, and
foreign counterparts of the patents and patent applications listed in Exhibit B; (c) all patents
issuing from the patents and patent applications referenced in clauses (a) and (b); and (d) any
extensions of or supplementary protection certificates allowed on any of the foregoing.



     1.12 “Northwestern Confidential Information” means Information as defined in the Confidential
Disclosure Agreement executed by the Parties on October 10, 2005 (the “CDA”).



     1.13 “Northwestern Patent Rights” means: (a) those patents and patent applications listed in
Exhibit C; (b) all divisionals, continuations, continuations-in-part (but only to the extent that
they claim subject matter that is disclosed in the patents and applications listed in



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Exhibit C sufficiently to fully support such claims under 35 U.S.C. §112), reexaminations, and
reissues, and foreign counterparts of the patents and patent applications listed in Exhibit C; (c)
all patents issuing from the patents and patent applications referenced in clauses (a) and (b); and
(d) any extensions of or supplementary protection certificates allowed on any of the foregoing.



     1.14 “Patent Rights” means individually or collectively depending on the reference, the
Nanosphere Patent Rights, the Northwestern Patent Rights, and the Joint Patent Rights.



     1.15 “Technical Information” means all research and development information, technical data,
inventions, trade secrets, know-how and supportive information that are: (a) not claimed in any
patent or patent application; (b) necessary for the development, manufacture, or use of a Licensed
Product; (c) owned and controlled by Northwestern and developed by or under the direct supervision
of Chad A. Mirkin or Robert L. Letsinger at their laboratories; and (d) either (i) conceived,
created or developed prior to the Effective Date if Nanoparticle Technology or Biobarcode
Technology or (ii) conceived, created, or developed after the Effective Date if in the
Biodiagnostics Field.



     1.16 “Term” means the period of time from the Effective Date until the date of the last to
expire of the Patent Rights, unless earlier terminated as provided in Section 10.



     1.17 “Third Party” means any person or entity other than a party hereto and its then current
Affiliates and sublicensees.



     1.18 “Valid Claim” means any claim within the Patent Rights, on a country-by-country basis:
(a) in any patent application; or (b) in a patent that has not expired, been abandoned or declared
invalid and unenforceable by a non-appealable order.



2. Grant of Rights




     2.1 Nanosphere Patent Rights.



          (a) The parties acknowledge that Nanosphere owns the Nanosphere Patent Rights.



          (b) Subject to the terms of this Agreement, Nanosphere grants Northwestern an exclusive (even
as to Nanosphere), worldwide, irrevocable, non-transferable (except as permitted under Section
12.5), fully paid-up license outside the Biodiagnostics Field, with the right to sublicense (as
provided in Section 2.10), under the Nanosphere Patent Rights to use, make, have made, sell, offer
for sale and import Licensed Products outside of the Biodiagnostics Field.



     2.2 Northwestern Patent Rights.



          (a) The parties acknowledge that Northwestern owns the Northwestern Patent Rights.



          (b) Subject to the terms of this Agreement, Northwestern grants Nanosphere an exclusive (even
as to Northwestern), worldwide, irrevocable, non-transferable (except as



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permitted under Section 12.5) license in the Biodiagnostics Field, with the right to
sublicense (as provided in Section 2.10), under the Northwestern Patent Rights, to make, have made,
use, sell, offer for sale, export and import Licensed Products within the Biodiagnostics Field.



          (c) Northwestern retains the right on behalf of itself and other non-profit entities to use,
have used, make, have made (solely by non-profit entities) and transfer subject matter disclosed or
claimed in the Patent Rights solely for non-profit research and/or academic purposes.



     2.3 Joint Patent Rights.



          (a) Each party acknowledges that the other party is a co-owner of an equal and undivided
interest in and to the Joint Patent Rights.



          (b) Subject to the terms of this Agreement, Nanosphere grants Northwestern an exclusive (even
as to Nanosphere), worldwide, irrevocable, non-transferable (except as permitted under Section
12.5), fully paid-up license outside the Biodiagnostics Field, with the right to sublicense (as
provided in Section 2.10), under the Joint Patent Rights to use, make, have made, sell, offer for
sale and import Licensed Products outside of the Biodiagnostics Field.



          (c) Subject to the terms of this Agreement, Northwestern grants Nanosphere an exclusive (even
as to Northwestern), worldwide, irrevocable, non-transferable (except as permitted under Section
12.5) license in the Biodiagnostics Field, with the right to sublicense (as provided in Section
2.10), under the Joint Patent Rights, to make, have made, use, sell, offer for sale, export and
import Licensed Products within the Biodiagnostics Field.



     2.4 Patent Classification.



          (a) The various Exhibits listing the Patent Rights have been assigned based on the parties’
assessment of the claims as issued or pending as of the Effective Date. Should the claims for a
patent or patent application of the Patent Rights change or a terminal disclaimer issue no longer
be applicable such that the patent or patent application becomes more appropriately suited to a
different Exhibit category, the parties agree to amend the Exhibits to this Agreement to reflect
such change.



          (b) The parties agree to execute and deliver to each other any written instruments and to
perform any other acts, reasonably necessary to perfect and record the parties’ respective
ownership interest in and to the Patent Rights, nunc pro tunc to the date of the first of any
applicable assignment on such Patent Rights. Each assignment shall include the right to sue for
and retain damages attributable to any claims the assignor could have brought or can bring in the
future regarding the Patent Rights that are the subject of the assignment.



     2.5 BIOBARCODE Trademark.



          (a) Subject to the terms of this Agreement, Nanosphere grants Northwestern a fully paid-up,
nonexclusive, non-transferable (except as permitted under Section 12.5), worldwide license to use
the trademark and/or service mark BIOBARCODE, including all registrations thereon (the “Licensed
Mark”) solely in connection with (i) commercialization of Licensed Products outside the
Biodiagnostics Field and (ii) research and/or academic purposes. The license rights granted in
this Section 2.5 are not transferable or sublicensable, without Nanosphere’s prior written consent,
provided that Nanosphere agrees to grant, upon request



5









 







from Northwestern, a nonexclusive fully paid-up license to the Licensed Mark, subject only to
reasonable quality control requirements, to any entity licensed by Northwestern to commercialize
Licensed Products other than the Biobarcode Technology.



          (b) Northwestern will use the Licensed Mark in accordance with any trademark usage policies
and guidelines provided to Northwestern by Nanosphere. Northwestern will furnish to Nanosphere, at
Nanosphere’s request and expense, a sample of each use of the Licensed Mark for inspection,
analysis, and approval prior to such use. Northwestern’s use of the Licensed Mark will not
tarnish, blur or dilute the quality associated with the Licensed Mark or the associated goodwill.
Northwestern acknowledges that the Licensed Mark will remain the sole and exclusive property of
Nanosphere. Northwestern will not contest or aid others in contesting the validity of or
Nanosphere’s ownership of the Licensed Mark. Northwestern will not apply for, or aid or cause
others to apply for, any registration of the Licensed Mark or any composite mark based on or
incorporating any of the Licensed Mark or any confusingly similar marks. All goodwill and benefits
arising from the use of the Licensed Mark will automatically vest in Nanosphere.



     2.6 Technical Information.



          (a) The parties acknowledge that Northwestern owns the Technical Information.



          (b) Subject to the terms of this Agreement, Northwestern grants Nanosphere a nonexclusive,
worldwide, irrevocable, non-transferable (except as permitted under Section 12.5) license in the
Biodiagnostics Field, with the right to sublicense, to use the Technical Information to design,
develop, manufacture, have manufactured, sell, offer for sale, import, and export the Licensed
Products within the Biodiagnostics Field. Notwithstanding the license provided in this Section,
Nanosphere acknowledges that Northwestern does not have any obligation to provide any Technical
Information to Nanosphere other than pursuant to Northwestern’s obligation under Section 2.7 to
disclose Inventions.



     2.7 Future Rights.



          (a) Northwestern agrees to disclose to Nanosphere periodically (but no less frequently than
quarterly) all Inventions conceived prior to January 1, 2013 and, with respect to Inventions that
are solely Nanoparticle Technology or Biobarcode Technology, conceived at any time prior to the end
of the Term. For a period of one hundred eighty (180) days after disclosure, on an
Invention-by-Invention basis (“Evaluation Period”), Nanosphere has the first right in the
Biodiagnostics Field to evaluate the Invention and notify Northwestern if it desires to negotiate
an exclusive license in the Biodiagnostics Field to the Invention.



          (b) If during the Evaluation Period, Nanosphere notifies Northwestern that it does not desire
to negotiate such license under the Invention, or fails to notify Northwestern in writing that it
desires to negotiate such license, then Northwestern may license the Invention and any intellectual
property rights arising therefrom, in its sole discretion, without obligation to Nanosphere.



          (c) If during the Evaluation Period, Nanosphere notifies Northwestern in writing that it
desires to negotiate such license, then the parties shall:



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               (i) if the Invention is not Nanoparticle Technology or Biobarcode Technology and such
Invention is conceived prior to January 1, 2013, negotiate in good faith for not longer than ninety
(90) days to execute an agreement reflecting the terms of such license, which shall include the
terms set forth in Exhibit D. The parties will resolve any failure to reach agreement despite
good-faith negotiations within the ninety (90) day period in accordance with the dispute resolution
provisions provided in Section 11;



               (ii) if such Invention is Nanoparticle Technology or Biobarcode Technology and such Invention
is conceived prior to January 1, 2013, amend this Agreement to add such patent application and
patent rights claiming the Invention to the Northwestern Patent Rights in Exhibit C hereto; or



               (iii) if such Invention is Nanoparticle Technology or Biobarcode Technology and such Invention
is conceived on or after January 1, 2013, negotiate in good faith for not longer than ninety (90)
days to execute an agreement reflecting the terms of such license, which shall include the terms
set forth in Exhibit D. Such good faith negotiation and any license agreement reached therefrom
shall also include any embodiments of such single disclosed Invention applicable at greater than
100 nanometers if Nanosphere licenses the Nanoparticle Technology embodiments for such sign
disclosure of Invention. For purposes of clarity, the foregoing does not include an Invention that
does not disclose embodiments that are applicable at greater than 100 nanometers, including where
it is later conceived that such embodiments exist, provided that Northwestern does not knowingly
exclude such embodiments from the disclosure of Invention in bad faith. The parties will resolve
any failure to reach agreement despite good-faith negotiations within the ninety (90) day period in
accordance with the dispute resolution provisions provided in Section 11.



          (d) For Inventions that are not Nanoparticle Technology or Biobarcode Technology and that are
conceived after January 1, 2013, Northwestern agrees to disclose such Inventions to Nanosphere in
the event Northwestern offers such Inventions to Third Parties for licensing within seven (7)
business days of such disclosure to such Third Parties and negotiate with Nanosphere upon receipt
of written notice that Nanosphere desires to negotiate a license for such Invention so long as such
notice is received by Northwestern prior to having licensed the Inventions to a Third Party. Other
than these non-exclusive obligations to disclose and negotiate in good faith which, for purposes of
clarity shall not preclude Northwestern from disclosing and negotiating simultaneously with Third
Parties and entering into an exclusive or non-exclusive license agreement with such Third Parties,
Northwestern has no other obligations to Nanosphere for such Inventions, including pursuant to
Sections 2.12 and 7, unless the parties execute a license agreement that includes the terms set
forth in Exhibit D, which agreement neither party has any obligation to enter into.



          (e) Each disclosure of Invention will include a statement as to whether the Invention is
Platform technology (meaning the Invention has a scope of applicability similar in breadth to the
breadth that the gold nanoparticle invention or the biobarcode invention had at filing of a
non-provisional patent application) or Application technology (meaning the Invention has a scope of
applicability similar in breadth to the breadth that the electrical detection schemes of
nanoparticles or silver amplification of nanoparticles had at filing of a non-provisional patent
application).



          (f) If Nanosphere is found in breach of its diligence obligations for an Invention that is a
Platform technology during the arbitration procedures in Section 11 or Exhibit D (depending upon
which procedure governs the license of the Invention), then Nanosphere



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shall lose its rights under this Section 2.7 to negotiate a license to future improvements to
or new uses for such Platform Invention as of the date such arbitrator decided Nanosphere was in
breach.



     2.8 Reservation of Rights. All rights not expressly granted are reserved. Except as
expressly provided, nothing in this Agreement is intended to affect any right, title or interest in
or to any tangible or intangible property (including, any patent rights or technical information of
Nanosphere, other than the Nanosphere Patent Rights and the Joint Patent Rights).



     2.9 Subcontracting. If either party elects to exercise its right to “have made” a Licensed
Product using a subcontractor that is a for-profit entity, such party will provide notice to the
other party and the subcontract shall be consistent with the terms and conditions of this
Agreement. The notice will include the identity of the subcontractor and the specific Licensed
Product the subcontractor is manufacturing for the licensee party. The licensee party shall remain
liable for the actions of the subcontractor.



     2.10 Sublicenses. All sublicenses granted by either party shall be consistent with all terms
and conditions of this Agreement. The licensee party will disclose the identity of each
sublicensee who is not a non-profit to the licensor party, and the licensee party will be fully
responsible for all failures by any sublicensee to comply with the terms and conditions of this
Agreement.



     2.11 Government Rights. The licenses granted in this Agreement are subject to rights of the
U.S. government arising from federally funded research including, in accordance with Chapter 18 or
Title 35 of U.S.C. 200-212 and the regulations thereunder (37 CFR Part 401), when applicable.
Nanosphere and Northwestern agree to use best efforts to comply in all respects with all
applicable provisions of Chapter 18 or Title 35 of U.S.C. 200-212, the regulations thereunder (37
CFR Part 401) and any requirements in any contracts between Northwestern and any agency of the U.S.
government that provided funding for subject matter covered by the Patent Rights. Each party
agrees that it will provide the other party with all reasonably requested information and
cooperation for the other party to comply with such laws and regulations.



     2.12 Publications. Northwestern will be free to publish the results of any research. In
order to avoid loss of patent rights as a result of premature disclosure of patentable information,
unless such patentable information is already the subject of a previously filed patent application,
at least thirty (30) days prior to planned submission for publication or presentation of an
Invention, Northwestern shall submit to Nanosphere for review the material on which any of the
inventors of the Northwestern Patent Rights (provided that such inventor is, at the time, an
employee, student, agent, or faculty member of Northwestern) plans to publish or present and which
contains subject matter directly related to the Biodiagnostics Field licensed herein that is not
yet publicly known. Nanosphere shall notify Northwestern within such thirty (30) days: (a)
whether it desires to have a patent application filed on any Inventions contained in the material,
in which case the parties shall proceed to file a patent application in accordance with Section 7
(for which Nanosphere may request a delay in publication for no longer than an additional thirty
(30) days) and add a reference to such patent application to this Agreement by amending in writing
the appropriate Exhibit; or (b) whether such materials contain Nanosphere Confidential Information,
in which case Northwestern shall delete such Nanosphere Confidential Information from the intended
publication.



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3. Consideration




     3.1 Stock. The Equity Investment License Commitment and Original License each contain
provisions relating to stock of Nanosphere issued to Northwestern, including Sections 4.1, 4.2,
4.3, 4.4 and 8.2 of the Original License and Sections I and III of the Equity Investment/License
Commitment. Nothing in this Agreement is intended to alter or amend any such provision in the
Equity Investment License Commitment or Original License.



     3.2 Advance Payment to Inventors. Within thirty (30) days of filing a first non-provisional
application for a subject invention (as defined by 35 U.S.C. § 201(e)) included within the
definition of the Northwestern Patent Rights or Joint Patent Rights, the party filing such
application shall notify the other party of such filing. A subject invention disclosure shall
constitute one subject invention. Northwestern will provide Nanosphere with a list of the
inventors of the subject invention and their addresses. Nanosphere will notify the inventors of
such filing and give each inventor an option to receive either: (a) an Advanced Payment in the
amount of either (i) [—***—] per subject invention (not per application if there are multiple
applications covering one subject invention), if the subject invention claimed in such application
is a Platform technology or both Platform technology and Application technology; or (ii)
[—***—] per subject invention (not per application if there are multiple applications covering
one subject invention) if the subject invention claimed in such application is an Application
technology (collectively “Advance Payment”) from Nanosphere and waive the inventor’s right to the
inventor’s share under the Northwestern Patent Policy; or (b) a portion of the royalty payments
made to Northwestern under Section 3.3, as determined between Northwestern and the Northwestern
inventor in accordance with the Northwestern Patent Policy. If an inventor elects to receive an
Advance Payment, then Nanosphere will pay the inventor such amount within thirty (30) days after
issuance of the first patent covering such subject invention, and will be entitled to deduct such
Advance Payment from the royalties due to Northwestern under Section 3.3 in connection with a
Licensed Product covered by Patent Rights for which the inventor received the Advance Payment. If
an inventor chooses to share in the royalty payments made to Northwestern, then Nanosphere will
have no further payment obligation to such inventor with respect to the subject invention. Nothing
in the foregoing sentence shall preclude any payment obligation with respect to other subject
inventions. The parties agree to meet on an annual basis to discuss the Advance Payments to
inventors made hereunder to ensure that the payments meet the needs and objectives of the parties.



     3.3 Earned Royalty.



          (a) Beginning January 1, 2007, Nanosphere agrees to pay Northwestern a royalty of [—***—]
percent ([—***—]%) of Gross Profits of Licensed Products. Gross Profit shall at no time: (i)
prior to January 1, 2009 be less than [—***—] percent ([—***—]%) and (ii) after January 1,
2009, be less than [—***—] percent ([—***—]%) (“Floor”) of the gross invoiced price of
Licensed Products sold by Nanosphere, its Affiliates or its sublicensee. If Gross Profits fall
below the Floor, the percentage Nanosphere shall use to calculate its royalty obligation to
Northwestern for such entity shall be the Floor.





***
Confidential Treatment Requested

Text Omitted and Filed Separately





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          (b) Nanosphere’s royalty payment obligations are triggered by the issuance of the first patent
within the Patent Rights or Joint Patent Rights which cover a Licensed Product sold by Nanosphere,
its Affiliates or sublicensee, provided that Nanosphere will pay royalties previously accrued on
Gross Profits for Licensed Products sold prior to the issue date. Nanosphere will pay Northwestern
on a quarterly basis within forty-five (45) days after the end of each quarter for the Licensed
Products sold by Nanosphere and its Affiliates during such quarter or prior thereto for any royalty
payment accrued but not yet due because no patent of the Patent Rights had been issued.



4. Diligence




     4.1 Commercially Reasonable Efforts. Nanosphere agrees to make commercially reasonable
efforts to bring subject inventions (as that term in defined in 35 U.S.C. §200 et seq. (the
Bayh-Dole Act)) of the Northwestern Patent Rights and Joint Patent Rights to market, including
making practical application (as that term is defined in 37 C.F.R. Chapter IV, § 401.2(e)) of the
rights licensed to it under this Agreement by Northwestern, as set forth in the Bayh-Dole Act.



     4.2 Progress Report. Commencing in 2007 and for each year thereafter during the Term,
Nanosphere will submit to Northwestern by the end of each calendar year an annual progress report
certifying Nanosphere’s activities related to development and commercialization of the subject
inventions (as that term in defined in the Bayh-Dole Act) of the Northwestern Patent Rights and/or
Joint Patent Rights and the obtaining of the governmental approvals necessary, if any, for
marketing the subject inventions.



          (a) If Nanosphere fails to provide the progress report to Northwestern or Northwestern
believes in good faith that Nanosphere is not using commercially reasonable efforts to develop or
commercialize the subject inventions of the Northwestern Patent Rights and/or Joint Patent Rights,
then Northwestern will promptly notify Nanosphere thereof and the parties will meet within fifteen
(15) days of such notice and agree upon a procedure for curing Nanosphere’s noncompliance.



          (b) If the parties cannot agree upon such a procedure within thirty (30) days of such meeting,
or Nanosphere fails to cure such noncompliance within thirty (30) days after the parties agree upon
such a procedure, then the parties will submit the dispute to arbitration in accordance with
Article 11, in which case the arbitrator will determine whether Nanosphere is using commercially
reasonable efforts to develop or commercialize the subject inventions of the Northwestern Patent
Rights and/or Joint Patent Rights.



          (c) In the event the arbitrator determines that Nanosphere is not using commercially
reasonable efforts, the arbitrator will: (i) set forth a procedure for Nanosphere to cure its
noncompliance and a deadline therefore; or (ii) convert the exclusive licenses as they relate to
the subject matter of the arbitration granted under Sections 2.2(b) and 2.3(c) to a nonexclusive
license.



          (d) If the arbitrator sets forth a procedure and timeline as described in (c) above, and
Nanosphere does not cure its failure to use commercially reasonable efforts to develop or
commercialize each subject invention of the Northwestern Patent Rights and/or Joint Patent Rights
in accordance with such procedure and timeline, then the exclusive licenses granted to Nanosphere
under Sections 2.2(b) and 2.3(c) as they relate to the Northwestern



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Patent Rights and/or Joint Patent Rights claiming the subject matter of the arbitration, will be
converted to a non-exclusive license, and Northwestern will have the right to license such Patent
Rights on a non-exclusive basis to any Third Party. If Northwestern determines that it is unable
to license the Patent Rights to a Third Party on a non-exclusive basis, Nanosphere will grant a
sublicense under all its rights in such Patent Rights to the Third Party designated by Northwestern
to permit such Third Party to have exclusivity (even as to Nanosphere) under such Patent Rights
claiming the subject matter of the arbitration In avoidance of doubt, the conversion of
Nanosphere’s license to the Patent Rights to a non-exclusive license and the obligation to
sublicense the Patent Rights to the Third Party referenced in this Section 4.2(d) apply only to
those portions of the Patent Rights claiming any subject invention that has not been developed or
commercialized using commercially reasonable efforts. For example, if a patent covers multiple
subject inventions, where only one subject invention has not been developed or commercialized using
commercially reasonable efforts, the non-exclusive license and the sublicensing obligation apply
only to such subject invention and do not apply to the other subject inventions covered by such
patent.



          (e) In each instance, diligence under this Section shall be determined on a per subject
invention basis.



          (f) The procedure in this Section 4.2 shall not be applicable to Inventions licensed under
2.7(c) (i), as the diligence obligations and procedures set forth in the separate agreement shall
govern.



          (g) For avoidance of doubt, the parties agree that the diligence requirement provided herein
will not apply to any Licensed Product that is licensed to Nanosphere, to the extent Nanosphere is
pursuing an alternate Licensed Product also licensed from Northwestern, where the alternate
Licensed Product would be competitive with the Licensed Product licensed hereunder or it would not
be commercially reasonable to pursue both the Licensed Product licensed hereunder and the
alternative Licensed Product.



     4.3 Bayh-Dole Compliance. Notwithstanding anything to the contrary, Nanosphere shall comply
with any request of the United States Government with respect to compliance with 35 U.S.C. §200 et
seq. (the Bayh-Dole Act), regardless of whether such request is made directly to Nanosphere or to
Northwestern.



5. Reports, Records, and Payments and Notices




     5.1 Reports. After the first sale and for each Licensed Product sold by Nanosphere or
its Affiliate or sublicensees, Nanosphere shall submit to Northwestern reports for each calendar
quarter, due within sixty (60) days following the end of each quarter, setting forth the following:



          (a) The name of each Licensed Product subject to a Gross Profits calculation, along with a
list of the Patent Rights covering each such Licensed Product;



          (b) An accounting of total Gross Profits for each Licensed Product including a reporting of
any applicable deductions, allowances, charges, and foreign exchange rates;



          (c) A calculation of any applicable credits for Advance Payments to inventors under Section
3.2;



11









 





          (d) the amount of royalty payments due from previously accrued Gross Profits but not paid
until a patent issued of the Patent Rights claiming such Licensed Product; and



          (e) the amount of total royalty payment due.



If no sales have occurred, Nanosphere will submit a report so stating. Concurrent with the making
of each quarterly report, Nanosphere shall include the royalty payment due.



     5.2 Records. Nanosphere shall keep and maintain and shall require all of its Affiliates, and
sublicensees to keep and maintain complete, accurate, and continuous records regarding any payments
due hereunder for a period of five years following the end of the calendar year to which they
pertain.



     5.3 Payments. All payments shall be paid in United States dollars at the addresses designated
by Northwestern. If any royalties are based on Gross Profits converted from foreign currency,
payment shall be made by using the exchange rate obtained by Nanosphere in converting the foreign
currency to United States dollars. Late payment shall bear interest equivalent to the lesser of:
(i) the prime rate as published in the Wall Street Journal on the last day of the period to which
the payment relates plus 2% or (ii) the maximum rate permitted by applicable law. Acceptance of
late payments shall not negate or waive Northwestern’s right to seek any other remedy, legal or
equitable, to which it may be entitled.



     5.4 Audit. Northwestern shall have the right, at its expense, to appoint an independent
auditor, reasonably acceptable to Nanosphere, to audit the records kept by Nanosphere, its
Affiliates, and sublicensees, upon reasonable prior written notice of no less than twenty (20)
days. The audit must take place during normal business hours and at the primary place of business
of Nanosphere, its Affiliates, or sublicensees respectively, and will be limited solely to
verifying the amount of royalties payable under this Agreement. Any amount found to have been owed
but not paid prior to notice to Nanosphere of the audit shall be paid promptly to inventors with
interest as provided hereunder. Any amount found to have been overpaid will be promptly refunded
to Nanosphere. If the audit shows that royalties were underpaid prior to notice to Nanosphere of
the audit, by 10% or more in any reporting period, Nanosphere shall reimburse Northwestern for the
reasonable, out-of-pocket expense of the audit. Northwestern may not exercise its audit right more
than once per calendar year unless required by the federal government. Except as necessary to
enforce the terms of this Agreement and for the statement of payments due, the auditor will not
disclose to Northwestern any Nanosphere Confidential Information learned during the audit.



     5.5 Notices. All required communications under this Agreement shall be in writing, sent to
the party at its address or facsimile number below, or as otherwise designated by the party in
accordance with this Agreement, and duly given or made: (a) on the date delivered in person; (b)
on the date transmitted by facsimile, if confirmation is received; (c) three days after deposit in
the mail if sent by certified U.S. mail postage prepaid, return receipt requested; and (d) one day
after deposit with a nationally recognized overnight carrier service with charges prepaid.



	 	 	 
	If to Northwestern:

	 	C. Bradley Moore, Vice President for Research
	 

	 	Office of Research Services
	 

	 	Northwestern University






12









 





	 	 	 
	 

	 	Rebecca Crown Center 2-223
	 

	 	633 Clark St.
	 

	 	Evanston, IL 60208-1108
	 

	 	Facsimile: 847 467-4620
	 
	 	 
	With copies to:

	 	Tim Fournier, Associate Vice President for Research Integrity
	 

	 	Office for Research Integrity
	 

	 	Northwestern University
	 

	 	711 Rubloff
	 

	 	750 N. Lake Shore Drive
	 

	 	Chicago, IL 60611
	 

	 	Facsimile: 312 503-0902
	 
	 	 
	 

	 	John Calkins, Assistant General Counsel
	 

	 	Office of the General Counsel
	 

	 	Northwestern University
	 

	 	Rebecca Crown Center
	 

	 	633 Clark St.
	 

	 	Evanston, IL 60208-1108
	 

	 	Facsimile: 847 467-3092
	 
	 	 
	If to Nanosphere:

	 	William Moffitt
	 

	 	President and CEO
	 

	 	Nanosphere, Inc.
	 

	 	4088 Commercial Avenue
	 

	 	Northbrook, IL 60062
	 

	 	Facsimile: 847 400-9199
	 
	 	 
	With a copy to:

	 	Esteban Ferrar
	 

	 	Paul Hastings, LLP
	 

	 	1055 Washington Boulevard
	 

	 	Stamford, CT 06901
	 

	 	Facsimile: (203) 359-3031






6. Confidentiality




     6.1 Confidentiality of and Treatment of Confidential Information. Unless expressly
provided herein, the use of Northwestern Confidential Information disclosed hereunder shall be
governed by the Confidential Disclosure Agreement executed by the Parties on October 10, 2005
(“CDA”). The reports provided by Nanosphere pursuant to Sections 4.2 and 5.1, as well as any audit
of same, and the information provided by Nanosphere pursuant to Sections 2.9, 2.10, and 7.9 may
contain confidential or proprietary information of Nanosphere (“Nanosphere Confidential
Information”) but shall not include any Nanosphere Confidential Information unless the Vice
President for Research or the Associate Vice President for Research Integrity of Northwestern
requests the same in writing and Northwestern agrees to be bound by this Section 6.1. Nanosphere
Confidential Information shall not include information that (i) is or becomes publicly known
without the wrongful act, omission or breach of this Agreement by Northwestern, (ii) is known at
the time of disclosure, (iii) has been or is received from a third party not under an obligation of
confidentiality, (iv) is developed without knowledge



13









 







of or access to such information as shown by contemporaneous written records of Northwestern,
or (v) is approved for release by written authorization from Nanosphere. Nanosphere acknowledges
that Northwestern does not wish to receive any Nanosphere Confidential Information, especially
Confidential Information that is technical or scientific in nature (“Technical Confidential
Information”). Accordingly, to the extent Nanosphere inadvertently provides any Confidential
Information, including Technical Confidential Information, to Northwestern under this Agreement,
Northwestern shall not be obligated to treat such Confidential Information, including Technical
Confidential Information, as confidential, and nothing in this Agreement requires Nanosphere to
provide any Confidential Information, including Technical Confidential Information, to Northwestern
unless the Vice President for Research or the Associate Vice President for Research Integrity of
Northwestern requests the same in writing and Northwestern agrees to be bound by this Section 6.1.
Confidential Information shall not be disclosed, used or otherwise made available during or for two
(2) years after the Term, except in the event of termination by either party for breach on the part
of the other, in which event the terminated party’s obligation to maintain the confidentiality of
the information and comply with the non-use provisions will exist for a period of five (5) years
after the termination for breach. The party receiving Confidential Information will return or
destroy such Confidential Information in its possession or control promptly upon the written
request of the disclosing party or the expiration or termination of this Agreement, whichever comes
first, provided that the party receiving Confidential Information may retain one copy of the same
solely to evidence compliance herewith.



     6.2 Confidentiality of Agreements. Except as otherwise required by law, regulation or court
order, the financial terms and conditions of this Agreement shall be Confidential Information of
both parties, and neither party will disclose the financial terms and conditions of this Agreement
to any Third Party, except: (a) to inventors, attorneys, accountants, and other professional
advisors under a duty of confidentiality; (b) to government entities and non-profit entities
funding research; (c) to a Third Party under a duty of confidentiality in connection with obtaining
financing or in connection with the potential sale of its business or assets to which this
Agreement relates, whether by merger, sales of assets, or sale of stock; (d) to potential licensees
of intellectual property, other than intellectual property licensed under this Agreement, under a
duty of confidentiality, but only with respect to provisions relating to the scope of license,
intellectual property management and confidentiality to avoid any conflict with this Agreement; and
(e) to sublicensees and subcontractors under this Agreement, under a duty of confidentiality, but
only with respect to provisions relating to the scope of license, confidentiality, publications,
diligence, indemnification and insurance, dispute resolution and intellectual property management.



7. Intellectual Property Management




     7.1 Nanosphere Responsibility. As between Northwestern and Nanosphere, Nanosphere shall
have the first right, but not the obligation, within thirty (30) days of receiving a disclosure of
Invention (unless a shorter period of time is required due to potential bar date) to elect to
file, and thereafter prosecute, including oppositions and interferences and maintain (as between
Northwestern and Nanosphere), Inventions where the claimed subject matter is exclusively or
primarily in the Biodiagnostics Field (“NS Subject Matter”). With respect to NS Subject Matter,
Nanosphere will:



14









 





          (a) afford Northwestern the opportunity to advise and comment prior to Nanosphere taking any
action, including providing Chad A. Mirkin sufficient prior review of any patent application being
filed with any disclosure in addition to that provided by Chad A. Mirkin in the disclosure of
Invention (i.e. any filing other than a cover sheet provisional patent application);



          (b) consider all advice and comments provided by Northwestern and use reasonable efforts to
accommodate such advice and comments;



          (c) keep Northwestern fully informed of the status of filing, prosecution and maintenance,
including providing copies of all correspondence to or from any patent office in a timely manner;
and



          (d) pay all out-of-pocket costs and expenses associated with the foregoing, including
reimbursing Northwestern within thirty (30) days after receipt of invoice for its reasonable and
documented out-of-pocket costs and expenses, including attorney’s fees, attorney’s costs,
attorney’s expenses, and filing fees, if any, incurred prior to transferring such Patent Rights to
Nanosphere’s patent counsel regarding the foregoing.



     7.2 NU Subject Matter. Northwestern has the first right but not the obligation to file,
prosecute and maintain (as between Northwestern and Nanosphere) Inventions which are not NS Subject
Matter (“NU Subject Matter). With respect to NU Subject Matter:



          (a) Northwestern will afford Nanosphere the opportunity to advise and comment prior to
Northwestern taking any action, unless prompt filing of a provisional application is necessary to
preserve rights under the patent law;



          (b) Northwestern will consider all advice and comments provided by Nanosphere and to use
reasonable efforts to accommodate such advice and comments as reasonably necessary to protect
Nanosphere’s rights in the Inventions;



          (c) If Nanosphere is licensed under such Inventions, Nanosphere will reimburse Northwestern
within thirty (30) days after receipt of invoice for Northwestern’s reasonable and documented
out-of-pocket costs and expenses, including attorney’s fees, attorney’s costs, attorney’s expenses
and filing fees;



          (d) If Northwestern licenses the foregoing rights to a Third Party, Nanosphere will thereafter
be obligated to pay only its proportional share of any such attorney fees, attorney’s costs,
attorney’s expenses, and filing fees, based on the total number of licensees;



          (e) Northwestern will reimburse Nanosphere for such payments made prior to the effective date
of any other license outside the Biodiagnostics Field from any payment made to Northwestern under
such license. Other than reimbursing Northwestern’s unreimbursed out-of-pocket costs and expenses,
including attorney’s fees, attorney’s costs, attorney’s expenses, and filing fees regarding the
foregoing, Nanosphere will be reimbursed first, prior to distributing payments to inventors or
otherwise, until such costs and expenses, including attorney’s fees, attorney’s costs, attorney’s
expenses, and filing fees paid by Nanosphere are fully reimbursed, down to Nanosphere’s
proportional share. Northwestern will make reasonable efforts to obtain such reimbursement as an
upfront license fee in any license.



15









 





     7.3 Priority Cooperation. Notwithstanding the foregoing, where a filing is necessary to
protect the rights and sufficient time is not available (i.e. less than a week) to determine
whether Nanosphere or Northwestern should file, Northwestern may make the initial filing of a
patent application on the manuscript or presentation (including filing such manuscript or
presentation as a provisional application with a cover sheet containing the necessary federal grant
information). If the claimed subject matter is NS Subject Matter, Northwestern will transfer the
prosecution to Nanosphere.



     7.4 Abandonment. If either party determines that it wishes to abandon or cease to maintain
any patent of the Patent Rights, or abandon its right to file or the prosecution of any patent
application of the Patent Rights or an Invention:



          (a) it shall give the other party at least thirty (30) days written notice prior to any
deadline (whether or not such deadline is extendable);



          (b) as between Northwestern and Nanosphere, the other shall have the option, but not the
obligation, to undertake such activity at its sole cost and expense;



          (c) each party will comply with all reasonable requests of the other to prevent such rights
from becoming abandoned and will promptly transfer any files in furtherance therewith; and



          (d) Nanosphere will no longer be licensed under patent applications and patents that it does
not pay all costs and expenses associated therewith and Northwestern shall be free to license them
to Third Parties.



     7.5 Patent Term Extension. The parties shall cooperate in selecting a patent within the
Patent Rights to seek a term extension for or supplementary protection certificate in accordance
with the applicable laws of any country. Each party agrees to execute any documents and to take
any additional actions as the other party may reasonably request in connection therewith.



     7.6 Registration of Licenses. Nanosphere and for-profit sublicensees of Northwestern under
the rights granted by Nanosphere in Section 2.1 will register and give notice concerning this
Agreement, at their respective expense, in certain countries where, to their respective knowledge,
an obligation or opportunity under law exists to so register or give notice. Northwestern agrees
to fully cooperate with Nanosphere, at Nanosphere’s expense and request, to comply with the
obligations under this Section including promptly executing any documents and taking additional
actions as Nanosphere may reasonably request.



     7.7 Marking. Each party agrees to mark the Licensed Products with the patent numbers of the
patents licensed hereunder to such party in such a manner as to conform with the patent laws and
practice of any country of use, shipment, sale or import. Upon request from the licensor party,
the licensee party shall provide evidence of proper marking.



     7.8 Notice of Infringement. Each party shall promptly inform the other in writing of any
alleged infringement of any of the Patent Rights or Technical Information and provide the other
party with any available evidence of infringement.



     7.9 Enforcement and Defense. As between Northwestern and Nanosphere, Nanosphere will have the
first right but not the obligation to enforce and defend patents claiming



16









 







NS Subject Matter and Northwestern will have the first right but not the obligation to enforce
and defend patents on NU Subject Matter.



          (a) The party bringing/defending the action will pay all costs and expense.



          (b) Each party will cooperate with the other, including joining the action if a necessary
party.



          (c) The party bringing/defending will have the right to reasonably settle the action so long
as no fault is admitted or material obligation created regarding the other party or the inventors.



          (d) If the party having the first right does not exercise its right and provide the other
party notice of such within ninety (90) days of notice of the infringement or defense action (or
shorter time if required by the action), the other party may do so at its cost and expense with
cooperation (including joining the action if a necessary party) from the declining party.



          (e) Any recovery will first be applied to reimburse the parties costs and expenses and
thereafter shall be: (i) deemed Gross Profits for distribution in accordance with the terms of the
license if recovered by Nanosphere; and (ii) retained by Northwestern if recovered by Northwestern.



8. Representations, Warranties and Disclaimers




     8.1 Mutual Representations and Warranties. Each party represents and warrants to the
other that:



          (a) its execution and delivery of this Agreement has been duly authorized and no further
approval, corporate or otherwise, is required in order to execute this binding Agreement;



          (b) it shall comply with any applicable international, national, or local laws and regulations
in its performance under this Agreement;



          (c) to the best of its knowledge and belief, its rights and obligations under this Agreement
do not conflict with any rights granted to any third party;



          (d) its rights and obligations under this Agreement do not conflict with any court or
administrative order by which it is bound as of the Effective Date; and



          (e) it is the owner of its respective rights in Patent Rights and has all necessary right and
authority to grant the rights granted herein.



     8.2 Disclaimers. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS SECTION 8, NEITHER PARTY,
ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES, INDEPENDENT CONTRACTORS, REPRESENTATIVES,
CONSULTANTS, OR AGENTS MAKE ANY REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER
EXPRESS, STATUTORY OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, VALIDITY OR



17









 







ENFORCEABILITY OF ANY PATENT RIGHTS, OR TECHNICAL INFORMATION, ANY WARRANTY ARISING FROM ANY
COURSE OF DEALING, USAGE, OR TRADE PRACTICE, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR
NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR
WARRANTY GIVEN BY EITHER PARTY: THAT THE PRACTICE OF ANY LICENSE GRANTED HEREUNDER SHALL NOT
INFRINGE THE RIGHTS OF ANY THIRD PARTY; WITH RESPECT TO THE SCOPE, VALIDITY OR ENFORCEABILITY OF
THE TECHNICAL INFORMATION OR PATENT RIGHTS; OR THAT ANY PATENT WILL ISSUE BASED UPON ANY OF THE
PENDING PATENT RIGHTS.



     8.3 Limitation of Liability. IN NO EVENT SHALL EITHER PARTY, ITS TRUSTEES, DIRECTORS,
OFFICERS, EMPLOYEES, INDEPENDENT CONTRACTORS, REPRESENTATIVES, CONSULTANTS OR AGENTS BE LIABLE FOR
INCIDENTAL, PUNITIVE, CONSEQUENTIAL OR INDIRECT DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR
INJURY TO PROPERTY AND LOST PROFITS, LOST REVENUE, OR LOSS OF USE, REGARDLESS OF WHETHER THE PARTY
SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY.



     8.4 Prohibition Against Inconsistent Representations. Neither party will make any statements,
representations or warranties, or accept any liabilities or responsibilities whatsoever which are
inconsistent with any disclaimer or limitation included in this Section or any other provision of
this Agreement.



9. Indemnification and Insurance




     9.1 Indemnification by Nanosphere. Nanosphere shall indemnify, hold harmless, and defend
Northwestern, its Affiliates, trustees, officers, directors, employees, students, representatives,
independent contractors, agents and consultants from and against any and all third-party claims,
losses, damages, and/or liability of whatsoever kind or nature, as well as all costs and expenses,
including reasonable attorneys’ fees and court costs, which arise or may arise at any time out of
or in connection with: (a) Nanosphere’s or its Affiliates’ or sublicensees’ breach of this
Agreement; (b) the production, manufacture, sale, offer for sale, importation, use, consumption or
advertisement of Licensed Products; or (c) any act or omission of gross negligence or willful
misconduct of Nanosphere its Affiliates and/or sublicensees, except to the extent subject to an
indemnity obligation of Northwestern pursuant to Section 9.2.



     9.2 Indemnification by Northwestern. Northwestern shall indemnify, hold harmless, and defend
Nanosphere, its Affiliates, officers, directors, employees, students, representatives, independent
contractors, agents and consultants from and against any and all third-party claims, losses,
damages, and/or liability of whatsoever kind or nature, as well as all costs and expenses,
including reasonable attorneys’ fees and court costs, which arise or may arise at any time out of
or in connection with: (a) Northwestern’s or its sublicensees’ breach of this Agreement; (b) the
production, manufacture, sale, offer for sale, importation, use, consumption or advertisement of
Licensed Products by Northwestern, or its sublicensees under Section 2.1(b); or (c) any act or
omission of gross negligence or willful misconduct of Northwestern and/or its sublicensees, except
to the extent subject to an indemnity obligation of Nanosphere pursuant to Section 9.1.



18









 





     9.3 Procedure. The party seeking indemnification shall promptly notify the party obligated to
indemnify any claim or suit giving rise to the indemnity obligations under Sections 9.1 or 9.2 and
permit the indemnifying party to assume sole direction and control of the defense of the claim
(including the reasonable selection of counsel) with the right to reasonably settle such action in
its sole discretion, provided that such settlement does not impose any material obligation on the
indemnified party, including compromising the Patent Rights or Technical Information, or making any
admission of fault. The indemnified party will reasonably cooperate as requested (at the expense
of the indemnifying party) in the defense of the action. The indemnified party shall have the
right to be represented by counsel of its choosing at its expense.



     9.4 Insurance. Nanosphere and Northwestern’s sublicensee’s under Section 2.1(b) shall obtain
and carry in full force and effect commercial general liability insurance at such time as
Nanosphere, its Affiliates or sublicensees or such of Northwestern’s sublicensees have offered
products for sale, which insurance shall protect Nanosphere and Northwestern with respect to events
covered by this Section 9. Such insurance shall be written by a reputable insurance company
authorized to do business in the State of Illinois, shall list the other party as an additional
named insured thereunder, shall be endorsed to include product liability coverage, and shall
require thirty (30) days’ written notice to be given to Northwestern prior to any cancellation or
material change thereof. Such insurance shall be in an amount of $3 million per occurrence in the
event of death or personal injury and in the amount of $3 million per occurrence for property
damage, or in such other amounts as may be standard in the industry in which such devices are sold.
Each party shall provide the other with Certificates of Insurance evidencing the same. In the
event that either party acts as a licensor for Licensed Products, the party agrees to require the
non-profit sublicensee to carry product liability insurance satisfying the requirements of this
Section 9.4.



10. Expiration and Termination




     10.1 Expiration. This Agreement shall expire at the end of the Term, but upon such
expiration Nanosphere may continue to use thereafter the Technical Information it was using prior
to the end of the Term upon the same terms and conditions it was entitled to use it for prior to
such expiration.



     10.2 Surviving Rights and Obligations. The expiration of this Agreement does not relieve
either party of its rights and obligations that have previously accrued. After the Term, all
rights granted by either party to the other party shall be nonterminable and fully paid-up. All
Confidential Information of the other party shall be returned or destruction certified, at the
disclosing party’s election. Rights and obligations that by their nature prescribe continuing
rights and obligations shall survive the termination or expiration of this Agreement.



11. Dispute Resolution




     11.1 Amicable Resolution. In any dispute or controversy arising in connection with this
Agreement, the parties agree that the first recourse shall be to attempt to amicably resolve the
dispute with a sufficiently authorized member of each party’s management. By this agreement to
attempt amicable resolution, the parties are not waiving their right to seek and obtain specific
performance, injunctive relief or any other equitable remedy that may be



19









 







available during and after resolving any dispute or controversy in accordance with this
Section. In addition, neither party is required to arbitrate any dispute or controversy relating
to actual or threatened violation of its intellectual property rights (including any licensed
rights).



     11.2 Alternative Dispute Resolution. The parties agree that any dispute or controversy that
arises in connection with this Agreement and which cannot be amicably resolved by the parties shall
be resolved by binding arbitration administered by the American Arbitration Association (“AAA”) in
the manner set forth in this Section and in accordance with AAA’s rules of commercial arbitration.
To the extent there is any conflict between the provisions set forth in this Section 11 and any
procedural or other rules of AAA, this Section 11 will control.



     11.3 Initiation. Regardless of Sections 11.1 and 11.2, either party may initiate an
arbitration by serving upon the other party and filing with the AAA a written demand for
arbitration, including a general description of the nature of the claim and the nature and amount
of damages and/or other relief sought. Within ten (10) business days after its receipt of such
service, the other party may add additional issues to be resolved. Within fifteen (15) business
days after the demand for arbitration is filed, the parties will jointly select a single arbitrator
with the necessary skill level and knowledge of university technology transfer and licensing.



     11.4 Procedure. The arbitration shall be conducted in the following manner:



          (a) No later than forty-five (45) business days after final selection, the arbitrator shall
hold a hearing to resolve each of the issues identified by the parties.



          (b) At least five (5) days prior to the hearing, each party must submit to the arbitrator and
serve on the other party a proposed ruling on each issue to be resolved. Such proposed ruling may
include arguments on or analysis of the facts and/or issues and shall be limited to fifty (50)
pages unless otherwise agreed by the parties.



          (c) Document requests will be approved by the arbitrator and production will be made on an
expedited basis in keeping with the arbitration schedule. Each party shall be limited to two (2)
depositions and ten (10) interrogatories in accordance with the Federal Rules.



          (d) Each party shall be entitled to no more than eight (8) hours of hearing to present
testimony or documentary evidence. The testimony of both parties shall be presented during
consecutive calendar days. Such time limitation shall apply to any direct, cross or rebuttal
testimony. It shall be the responsibility of the neutral to determine whether the parties have had
the eight (8) hours to which each is entitled.



          (e) Each party shall have the right to be represented by counsel. The arbitrator shall have
the sole discretion with regard to the admissibility of any evidence.



          (f) The arbitrator shall rule on each disputed issue within thirty (30) days following the
completion of the testimony of both parties.



          (g) The arbitration shall take place in Chicago, Illinois, or such other place as the parties
agree.



          (h) The parties will share equally the cost of the arbitration, unless the arbitrator
determines that the non-prevailing party should bear such cost or allocates such cost between the
parties in any other manner.



20









 





          (i) The ruling shall be binding on the parties and may be entered as an enforceable judgment
by a state or federal court having jurisdiction of the parties.



     11.5 Baseball Arbitration. Notwithstanding anything to the contrary herein, with respect to
any dispute regarding whether Nanosphere is or is not using commercially reasonable efforts to
develop and commercialize a Licensed Product and any dispute regarding only the financial terms
this Agreement, the arbitrator must adopt, in its entirety, the proposed ruling of one of the
parties on such disputed issue (“Baseball Style Arbitration”). For any dispute that is subject to
Baseball Style Arbitration, the losing party will bear the entire cost of the arbitration,
including the fees and expenses of the arbitrator. The arbitrator will not be bound by Baseball
Style Arbitration with respect to any other dispute arising under this Agreement.



     11.6 Survival. This Section 11 shall survive any termination of this Agreement.



     11.7 Confidentiality. The parties and the arbitrator shall treat all aspects of the
arbitration proceedings, including without limitation discovery, testimony and other evidence,
briefs and the award, as Confidential Information.



12. Miscellaneous Provisions




     12.1 Governing Law. This Agreement shall be governed by the laws of the state of
Illinois, without regard to any choice-of-law provisions, except that questions affecting the
construction and effect of any patent shall be determined by the law of the country in which the
patent was granted. In any litigation or arbitration arising under or relating to this Agreement,
the prevailing party or parties shall be entitled to recover reasonable attorneys’ fees and
litigation and/or arbitration costs and expenses.



     12.2 Entire Agreement. This Agreement and its Exhibits, along with the Equity Investment
License Commitment and Original License but only for the provisions of the Equity Investment
License Commitment and Original License regarding stock, the CDA and the Material Transfer
Agreement entered into concurrently with this Agreement, between Nanosphere and Northwestern,
constitute the entire agreement between the parties with respect to the subject matter and
supersede all prior communications, agreements or understandings, written or oral, including the
original License and the Equity Investment/License Commitment, each dated May 10, 2000, except as
explicitly set forth herein. The parties expressly terminate the Original License. Any conflict
between this Agreement and the other agreements shall be resolved in favor of this Agreement. Any
amendment to this Agreement, including its exhibits, must be in writing and signed by both parties.
The delay or failure to assert a right or to insist upon compliance with any term or condition of
this Agreement shall not constitute a waiver of that right or excuse a similar subsequent failure
to perform any such term or condition. A valid waiver must be executed in writing and signed by
the party granting the waiver. Each party acknowledges that it was provided an opportunity to seek
advice of counsel and as such this Agreement shall not be strictly construed for or against either
party.



     12.3 Severability. The provisions of this Agreement are severable, and if any provision of
this Agreement is determined to be invalid or unenforceable under any controlling body of law, such
invalidity or non-enforceability shall not in any way affect the validity or enforceability of the
remaining provisions.



21









 





     12.4 Export Controls. It is understood that Northwestern is subject to United States laws and
regulations controlling the export of technical data, computer software, laboratory prototypes, and
other commodities that may require a license from the applicable agency of the United States
Government and/or may require written assurances by Nanosphere that it will not export data or
commodities to certain foreign countries without prior approval of such agency. Northwestern
represents neither that a license is required, nor that, if required, it will be issued.



     12.5 Assignment. Neither party may assign any rights under this Agreement or delegate any
duties under this Agreement, without the prior written consent of the other party. Notwithstanding
the foregoing, Nanosphere may assign or otherwise transfer this Agreement to an affiliate or to the
assignee or transferee of its entire business or of that part of its business to which this
Agreement relates without the prior written consent of Northwestern. Any assignment or transfer in
contravention with this Section shall be null and void. This Agreement shall be binding on and
inure to the sole benefit of the parties and their permitted successors and assigns. The
representations, warranties, covenants, and undertakings contained in this Agreement are for the
sole benefit of the parties and their permitted successors and assigns and shall not be construed
as conferring any rights to any Third Party.



     12.6 Use of Names. Except as provided in Section 2.5, neither party shall use the names or
trademarks, or any adaptation of them, of the other party without prior written consent of the
other in each separate case, except that the parties may state that Nanosphere is licensed under
the Northwestern Patent Rights. A party may issue a press release or other form of public
announcement regarding the execution of this Agreement only after the other party has given its
written approval, provided that such approval will not be unreasonably withheld.



     12.7 Independent Contractors. Nothing contained in this Agreement shall place the parties in
a partnership, joint venture or agency relationship, and neither party shall have the right or
authority to obligate or bind the other party in any manner.



     The parties execute this Agreement in two or more counterparts, each of which shall be deemed
an original but all of which taken together constitute one and the same instrument.



	 	 	 
	Northwestern University

	 	Nanosphere Inc.
	 
	 	 
	/s/ Timothy J. Fournier

	 	/s/ William P. Moffitt
	 

	 	 
	Name Timothy J. Fournier

	 	Name William P. Moffitt
	Title Assoc. Vice President

	 	Title CEO
	Date 25 May 2007

	 	Date 5/25/07






























































22









 





EXHIBIT A 

Joint Patent Rights




	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	00-713-H

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	60/200161 	 	 
	00-713-I4 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	09/966491 
	 	6610491 
	00-713-I6 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	09/967409 
	 	6740491 
	00-713-I12 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	09/975376 
	 	20030054358 
	00-713-I26 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	10/410324 
	 	6962786 
	00-713-L 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	09/693005 
	 	6495324 
	00-713-N 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	Australia
	 	56378/00 
	 	784040 
	00-713-O 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	Canada
	 	2376623 	 	 
	00-713-P 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	Japan
	 	2001-506866 	 	 
	00-713-Q 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	EPC
	 	00941713.0 	 	 
	00-715 

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	60/176409 	 	 
	00-715-A 

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	09/760500 
	 	6767702 
	00-715-B 

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	10/716829 
	 	20040110220 
	00-715-C 

	 	[...***...]
	 	Method of
Attaching
Oligonucleotides to
Nanoparticles and
Products Produced
Thereby
	 	PCT
	 	US01/01190 	 	 
	00-715-D 

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefor
	 	Australia
	 	32795/01 
	 	774593 






*** Confidential Treatment Requested

Text Omitted and Filed Separately




 









 





	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	00-715-E 

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefor
	 	Canada
	 	2396113 	 	 
	00-715-F 

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefor
	 	EPC
	 	01904855.2 	 	 
	00-715-G 

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefor
	 	Japan
	 	2001-551239 	 	 
	00-1085 

	 	[...***...]
	 	Method and
Materials for
Assaying Biological
Materials
	 	USA
	 	60/192699 	 	 
	00-1085-A 

	 	[...***...]
	 	Nanoparticles
having
Oligonucleotides
Attached Thereto
and Uses Therefore
	 	USA
	 	09/820279 
	 	6750016 
	00-1085-B

	 	[...***...]
	 	Method and
Materials for
Assaying Biological
Materials
	 	PCT
	 	US01/010071 	 	 
	00-1085-C

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	Australia
	 	2001255203 	 	 
	00-1085-D

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	Canada
	 	2402955 	 	 
	00-1085-E

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	EPC
	 	01928332.4 	 	 
	00-1085-F

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	Japan
	 	2001-570836 	 	 
	00-1085-G

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	10/640618 
	 	20040072231 
	00-1085-H

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	Australia
	 	2006200261 	 	 
	00-1085-I

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	Japan
	 	2006-195313 	 	 
	00-1086 

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	USA
	 	60/217782 	 	 
	00-1086-A

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	USA
	 	09/903461 
	 	6602669 
	00-1086-B

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	PCT
	 	US01/21846 	 	 
	00-1086-C

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	Australia
	 	2001276870 	 	 
	00-1086-D

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	Canada
	 	2415494 	 	 






*** Confidential Treatment Requested

Text Omitted and Filed Separately




2









 





	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	00-1086-E

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	EPC
	 	01954641.5 	 	 
	00-1086-E1 

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	Germany
	 	1954641.5 
	 	1360318 
	00-1086-E2 

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	France
	 	1954641.5 
	 	1360318 
	00-1086-E3 

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	UK
	 	1954641.5 
	 	1360318 
	00-1086-F

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	Japan
	 	2002-509534 	 	 
	00-1086-G

	 	[...***...]
	 	Method of
Detection by
Enhancement of
Silver Staining
	 	USA
	 	10/633878 
	 	20040101889 
	00-1259 see
00-1272 

	 	[...***...]
	 	Multicolor
Labeling of
Oligonucleotides
Arrays via
Size-Selective
Scattering of
Nanoparticle Probes
	 	USA	 	 	 	 
	00-1262 

	 	[...***...]
	 	Reagents and
Methods for
DNA-Directed
Assembly of
Proteins and Gold
Particles
	 	USA
	 	60/254392 	 	 
	00-1262-A

	 	[...***...]
	 	Reagents and
Methods for
DNA-Directed
Assembly of
Proteins and Gold
Particles
	 	USA
	 	60/255235 	 	 
	00-1272 

	 	[...***...]
	 	Multicolor
Labeling of
Oligonucleotide
Arrays Via
Size-Selective
Scattering of
Nanoparticle Probes
	 	USA
	 	60/254418 	 	 
	00-1272-A

	 	[...***...]
	 	Multicolor
Labeling of
Oligonucleotide
Arrays Via
Size-Selective
Scattering of
Nanoparticle Probes
	 	USA
	 	60/255236 	 	 
	00-1272-B

	 	[...***...]
	 	Two-Color
Labeling of
Oligonucleotide
Arrays Via
Size-Selective
Scattering of
Nanoparticles
Probes
	 	USA
	 	60/282640 	 	 
	00-1272-C 

	 	[...***...]
	 	Nanoparticles
having
Oligonucleotides
Attached Thereto
and Uses Therefore
	 	USA
	 	10/008978 
	 	6984491 
	00-1272-D

	 	[...***...]
	 	Multicolor
Labeling of
Oligonucleotide
Arrays Via
Size-Selective
Scattering of
Nanoparticle Probes
	 	PCT
	 	US01/46418 	 	 
	00-1272-E

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	EPC
	 	01990826.8 	 	 
	00-1272-F

	 	[...***...]
	 	Nanoparticles
Having
Oligonucleotide
Attached Thereto
and Uses Therefore
	 	USA
	 	11/050983 
	 	20060068378 
	03-666 

	 	[...***...]
	 	Biobarcode PCR
	 	USA
	 	60/482979 	 	 






3




*** Confidential Treatment Requested

Text Omitted and Filed Separately











 






	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	03-666-A

	 	[...***...]
	 	Bio-Barcodes
Based on
Oligonucleotide-Modified Particles
	 	USA
	 	60/506708 	 	 
	03-666-B

	 	[...***...]
	 	Nanoparticle-Based
Biobarcodes For The
Ultrasensitive
Detection Of
Proteins
	 	USA
	 	60/496893 	 	 
	03-666-C

	 	[...***...]
	 	Bio-barcode
Based Detection of
Target Analytes
	 	USA
	 	60/515243 	 	 
	03-666-D

	 	[...***...]
	 	Bio-barcode
based detection of
target analytes
	 	USA
	 	60/530797 	 	 
	03-666-E

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	USA
	 	10/877750 
	 	2005037397 
	03-666-F

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	PCT
	 	US04/020493 	 	 
	05-190 

	 	[...***...]
	 	Reporter
Group-Based
Bio-Bar-Code Assay
	 	USA
	 	60/570723 	 	 
	05-191 

	 	[...***...]
	 	Fluorophore-Based
Bio-Bar-Code
Amplification Assay
	 	USA
	 	60/585294 	 	 
	05-192 

	 	[...***...]
	 	Chemical
Release of Particle
Bound Molecules for
Molecular Detection
	 	USA
	 	60/645455 	 	 
	03-666-G

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	USA
	 	11/127808 
	 	20060040286 
	03-666-H

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	PCT
	 	US05/16545 	 	 
	03-666-I

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	Australia
	 	2004254367 	 	 
	03-666-J

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	Canada
	 	2529898 	 	 
	03-666-K

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes	 	China	 	2.0048E+11
	 	 
	03-666-L

	 	 	 	Bio-Barcode Based Detection of Target
Analytes
	 	Europe	 	4756138.6	 	1649055 (Published)
	03-666-M

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	India
	 	Unknown 
	 	Abandoned 
	03-666-N

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	Japan
	 	2006-517685 	 	 
	03-666-O

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	Australia
	 	TBA 	 	 
	03-666-P

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	Canada
	 	TBA 	 	 
	03-666-Q

	 	 	 	Bio-Barcode Based
	 	China
	 	TBA 	 	 
	 

	 	 	 	Detection of Target
Analytes	 	 	 	 	 	 
	03-666-R

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	Europe
	 	5856708.2 	 	 
	03-666-S

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	India
	 	TBA 	 	 






*** Confidential Treatment Requested

Text Omitted and Filed Separately




4









 





	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	03-666-T

	 	 	 	Bio-Barcode Based
Detection of Target
Analytes
	 	Japan
	 	TBA 	 	 
	00-713-C

	 	 	 	Nanoparticles Having
Oligonucleotides Attached Thereto And Uses Therefore
	 	USA
	 	09/344667 
	 	6361944 











5









 







EXHIBIT B

Nanosphere Patent Rights




	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	00-713 

	 	[...***...]

[...***...]

[...***...]
	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	60/031809 	 	 
	00-713-A

	 	[...***...]

[...***...]

[...***...]
	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	PCT
	 	US97/12783 	 	 
	00-713-B

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/240755 
	 	Abandoned 
	00-713-B1 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/923625 
	 	6773884 
	00-713-D

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	Australia
	 	40434/97 	 	 
	00-713-D1 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	Australia
	 	87242/01 
	 	770201 
	00-713-D2 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	Australia
	 	2004205147 	 	 
	00-713-E

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	Canada
	 	2262018 	 	 
	00-713-F

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	EPC
	 	97938010.2 	 	 
	00-713-G

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	Japan
	 	10-508917 	 	 
	00-713-G1 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	Japan
	 	2004-035790 	 	 
	00-713-I 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/603830 
	 	6506564 
	00-713-I1 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/961949 
	 	6582921 
	00-713-I2 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/957318 
	 	6759199 






*** Confidential Treatment Requested

Text Omitted and Filed Separately




 









 





	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	00-713-I3 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/957313 
	 	6645721 
	00-713-I5 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/966312 
	 	6673548 
	00-713-I8 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/974007 	 	 
	00-713-I9 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/973638 
	 	6878814 
	00-713-I10 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/973788 
	 	6720411 
	00-713-I11 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/975062 
	 	6677122 
	00-713-I14 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/975498 
	 	6861221 
	00-713-I15 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/975059 
	 	6828432 
	00-713-I16 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/976601 
	 	6903207 
	00-713-I17 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/976968 
	 	6818753 
	00-713-I18 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/976971 
	 	6682895 
	00-713-I19 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/976863 
	 	6986989 
	00-713-I-20 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/976577 
	 	6720147 
	00-713-I21 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/976618 
	 	6812334 
	00-713-I22 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/981344 
	 	6777186 






2









 





	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	00-713-I24 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/976617 
	 	6730269 
	00-713-I25 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/976378 
	 	6969761 
	00-713-J 

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	PCT
	 	US00/17507 
	 	4149-1-1-1-1 
	00-713-M

	 	 	 	Nanoparticles

Having

Oligonucleotides

Attached Thereto

And Uses Therefore
	 	USA
	 	09/693352 
	 	6417340 







3



















 





EXHIBIT C

Northwestern Patent Rights




	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	00-653 

	 	[...***...]
	 	Movement of
Biomolecule-coated
Nanoparticles in an
Electric Field
	 	USA
	 	60/224631 	 	 
	00-653-A

	 	[...***...]
	 	Movement of
Biomolecule-Coated
Nanoparticles in an
Electric Field
	 	USA
	 	09/927777 
	 	20020172953 
	00-653-B

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
and
Uses Therefore
	 	PCT
	 	US01/025237 	 	 
	00-653-C

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
and
Uses Therefore
	 	Australia
	 	2001281248 	 	 
	00-653-D

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
and
Uses Therefore
	 	Canada
	 	2418502 	 	 
	00-653-E

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
and
Uses Therefore
	 	EPC
	 	01959723.6 	 	 
	00-653-F

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
and
Uses Therefore
	 	Japan
	 	2002-522548 	 	 
	00-653-G

	 	[...***...]
	 	Movement of
Biomolecule-coated
Nanoparticles in an
Electric Field
	 	USA
	 	10/794741 	 	 
	00-653-H

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
And
Uses Therefore
	 	Australia
	 	2006200274 	 	 
	00-713-I7 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	09/974500 
	 	6709825 
	00-713-I23 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	09/976900 
	 	6902895 
	00-713-K

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
And
Uses Therefore
	 	USA
	 	60/213906 	 	 
	00-714 

	 	[...***...]
	 	Hybrid
Nanoparticles with
Block
Copolymer Shell
Structures
	 	USA
	 	60/110327 	 	 
	00-714-A

	 	 	 	Hybrid
Nanoparticles with
Block Copolymer
Shell Structures
	 	PCT
	 	US99/28387 	 	 
	00-714-B

	 	 	 	Hybrid
Nanoparticles with
Block Copolymer
Shell Structures
	 	Australia
	 	19286/00 
	 	768535 
	00-714-C

	 	 	 	Hybrid
Nanoparticles with
Block Copolymer
Shell Structures
	 	Canada
	 	2352362 	 	 
	00-714-D

	 	 	 	Hybrid
Nanoparticles with
Block Copolymer
Shell Structures
	 	China (PRC)
	 	99813888.6 
	 	PIRLOO12A 
	00-714-D1 

	 	 	 	Hybrid
Nanoparticles with
Block Copolymer
Shell Structures
	 	China (PRC)
	 	200410085239 	 	 






*** Confidential Treatment Requested

Text Omitted and Filed Separately




 









 





	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	00-714-E

	 	 	 	Hybrid
Nanoparticles with
Block Copolymer
Shell Structures
	 	EPC
	 	99962951.2 	 	 
	00-714-F

	 	 	 	Hybrid
Nanoparticles with
Block Copolymer
Shell Structures
	 	Japan
	 	2000-585664 
	 	3650582 
	00-714-G

	 	 	 	Nanoparticles with
Polymer Shells
	 	USA
	 	09/830620 
	 	7,115,688 
	00-1124 

	 	[...***...]
	 	Silver Staining
Removal by Chemical
Etching and
Sonication
	 	USA
	 	60/251715 	 	 
	00-1124-A

	 	[...***...]
	 	Silver Stain
Removal by Chemical
Etching and
Sonication
	 	USA
	 	09/998936 
	 	6726847 
	00-1124-B

	 	[...***...]
	 	Silver Staining
Removal by Chemical
Etching and
Sonication
	 	PCT
	 	US01/45039 	 	 
	01-565 

	 	[...***...]
	 	DNA-Block Copolymer
Conjugates
	 	USA
	 	60/286615 	 	 
	01-565-A

	 	[...***...]
	 	Oligonucleotide-Modified ROMP
Polymers and
Co-Polymers
	 	USA
	 	10/125194 
	 	20030113740 
	01-565-B

	 	[...***...]
	 	DNA-Block Copolymer
Conjugates
	 	PCT
	 	US02/12071 	 	 
	01-661 

	 	[...***...]
	 	DNA-Modified
Core-Shell Ag/Au
Nanocrystals
	 	USA
	 	60/293861 	 	 
	01-661-A

	 	[...***...]
	 	Non-Alloying Core
Shell Nanoparticles
	 	USA
	 	10/034451 
	 	20020177143 
	01-661-B

	 	[...***...]
	 	DNA-Modified
Core-Shell Ag/Au
Nanocrystals
	 	PCT
	 	US01/50825 	 	 
	01-661-C

	 	[...***...]
	 	Non-Alloying Core
Shell Nanoparticles
	 	USA
	 	10/153483 	 	 
	01-661-D

	 	[...***...]
	 	Non-Alloying Core
Shell Nanoparticles
	 	PCT
	 	US02/16382 	 	 
	01-661-E

	 	[...***...]
	 	Non-Alloying Core
Shell Nanoparticles
	 	USA
	 	10/397579 	 	 
	01-661-F

	 	[...***...]
	 	Non-Alloying Core
Shell Nanoparticles
	 	Australia
	 	2002341539 	 	 
	01-661-G

	 	[...***...]
	 	Non-Alloying Core
Shell Nanoparticles
	 	EPC
	 	02775688.1 	 	 
	01-661-H

	 	[...***...]
	 	Non-Alloying Core
Shell Nanoparticles
	 	Japan
	 	2003-514082 	 	 
	01-1565 

	 	[...***...]
	 	Array-Based
Electrical
Detection of
DNA Using
Nanoparticle Probes
	 	USA
	 	60/327864 	 	 
	01-1565-A

	 	[...***...]
	 	Nanoparticles having
oligonucleotides
attached thereto
and
uses therefor
	 	USA
	 	10/266983 
	 	20030207296 
	01-1565-B

	 	[...***...]
	 	Array-Based
Electrical
Detection Of
DNA Using
Nanoparticle Probes
	 	PCT
	 	US02/32088 	 	 
	01-1565-C

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
And
Uses Therefor
	 	Australia
	 	2002363062 	 	 
	01-1565-D

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
And
Uses Therefor
	 	Canada
	 	2463323 	 	 






*** Confidential Treatment Requested

Text Omitted and Filed Separately




2









 








	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	01-1565-E

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
And
Uses Therefor
	 	EPC
	 	02799155.3 	 	 
	01-1565-F

	 	[...***...]
	 	Nanoparticles Having
Oligonucleotides
Attached Thereto
And
Uses Therefor
	 	Japan
	 	2003-538330 	 	 
	01-1705 

	 	[...***...]
	 	Bio-Barcodes Based
On
Oligonucleotide-Modified Nanoparticles
	 	USA
	 	60/350560 	 	 
	01-1705-A

	 	[...***...]
	 	Barcodes Based on
Oligonucleotide-Modified Nanoparticles
	 	USA
	 	10/108211 
	 	6974669 
	01-1705-B

	 	[...***...]
	 	Bio-Barcodes Based
On
Oligonucleotide-Modified Nanoparticles
	 	PCT
	 	US02/11158 	 	 
	01-1705-C

	 	[...***...]
	 	Bio-Barcodes Based
On
Oligonucleotide-Modified Nanoparticles
	 	Australia
	 	2002256145 	 	 
	01-1705-D

	 	[...***...]
	 	Bio-Barcodes Based
On
Oligonucleotide-Modified Nanoparticles
	 	EPC
	 	02725590.0 	 	 
	01-1705-E

	 	[...***...]
	 	Bio-Barcodes Based
On
Oligonucleotide-Modified Nanoparticles
	 	Japan
	 	2002-578491 	 	 
	01-1705-F

	 	[...***...]
	 	Bio-Barcodes Based
On
Oligonucleotide-Modified Particles
	 	USA
	 	11/217106 
	 	20060051798 
	02-338 

	 	[...***...]
	 	Multichannel
Detection Using
Nanoparticle Probes
with Raman
Spectroscopic
Fingerprints
	 	USA
	 	60/378538 	 	 
	02-338-A

	 	[...***...]
	 	Multichannel
Detection Using
Nanoparticle Probes
with Spectroscopic
Fingerprints
	 	USA
	 	60/383630 	 	 
	02-338-B

	 	[...***...]
	 	Nanoparticle Probes
with Raman
Spectroscopic
Fingerprints for
Analyte
Detection
	 	USA
	 	10/172428 
	 	20030211488 
	02-338-C

	 	[...***...]
	 	Nanoparticle Probes
With Raman
Spectroscopic
Fingerprints For
Analyte
Detection
	 	USA
	 	10/431341 
	 	20040086897 
	02-338-D

	 	[...***...]
	 	Nanoparticle Probes
With Raman
Spectroscopic
Fingerprints For
Analyte
Detection
	 	PCT
	 	US03/14100 	 	 
	02-338-E

	 	[...***...]
	 	Nanoparticle Probes
With Raman
Spectroscopic
Fingerprints For
Analyte
Detection
	 	Australia
	 	2003237180 	 	 
	02-338-F

	 	[...***...]
	 	Nanoparticle Probes
With Raman
Spectroscopic
Fingerprints For
Analyte
Detection
	 	Canada
	 	2483697 	 	 






*** Confidential Treatment Requested

Text Omitted and Filed Separately




3









 





	 	 	 	 	 	 	 	 	 	 	 
	Case Number	 	NU#	 	Title	 	Country	 	App/Pat#	 	Patent no.
	02-338-G

	 	[...***...]
	 	Nanoparticle Probes
With Raman
Spectroscopic
Fingerprints For
Analyte
Detection
	 	EPC
	 	03736550.9 	 	 
	02-338-H

	 	[...***...]
	 	Nanoparticle Probes
With Raman
Spectroscopic
Fingerprints For
Analyte
Detection
	 	Japan
	 	2004-503919 	 	 
	05-661 

	 	[...***...]
	 	A Single Strand
Bio-Barcode System
	 	USA
	 	60/706575 	 	 
	06-147 

	 	[...***...]
	 	Multiplexed
Detection of
Protein
Cancer Markers with
Bio-Barcoded
Nanoparticle Probes	 	 	 	 	 	 
	00-713-I13 

	 	 	 	Nanoparticles
Having
Oligonucleotides
Attached Thereto
And Uses Therefore
	 	USA
	 	09/975384 
	 	00-713-I13 






*** Confidential Treatment Requested

Text Omitted and Filed Separately





4












 





EXHIBIT D




ARTICLE 1 — DUE DILIGENCE




     1.1 Licensee hereby represents that Licensee either has or will acquire the experience,
expertise and resources necessary to enable Licensee to perform its obligations hereunder.
Licensee shall, upon execution of this Agreement, submit to Northwestern a preliminary development
and business plan that sets forth an outline of Licensee’s intended efforts to develop and
commercialize Licensed Products. Such plan shall include a summary of personnel, expenditures and
estimated timing for the development and market potential of Licensed Products.



     1.2 Licensee agrees to use commercially reasonable efforts to develop and commercialize one or
more Licensed Products, including making practical application (as that term is defined in 35
U.S.C. § 201) of all subject inventions (as that term is defined in 35 U.S.C. § 201) licensed to it
under this Agreement by Northwestern, and comply with 35 U.S.C. § 200 et seq. and any regulations
promulgated thereunder the Bayh-Dole Act.



          (a) The definitive license agreement will include appropriate, specific development
milestones, along with due dates, indicative of Licensee’s use of commercially reasonable efforts
to develop and commercialize Licensed Products as required by this Section. Such milestones may
include, if appropriate based on the nature of the subject inventions licensed, that Licensee will,
subject to Sections 1.2(b) and 1.2(c): (a) learn and replicate the subject inventions licensed
hereunder within [months] from the Effective Date; (b) scale the subject inventions to reproducible
commercial levels within [years] of the Effective Date; and (c) submit an application for
regulatory approval for the first Licensed Product within [years] from the Effective Date.
Licensee shall make commercially reasonable efforts to submit subsequent applications for
regulatory approval on other Licensed Products.



          (b) If Licensee believes it will not meet any such milestone, it shall notify Northwestern and
negotiate a reasonable extension of the target date. Northwestern shall not unreasonably withhold
granting such extension.



          (c) If Northwestern is not willing to grant such extension, Licensee shall have the option to
pay Northwestern an amount of [$___] for each month that passes after the target date until
such objective is met, in which case, Licensee will be entitled to a monthly extension
for each month paid.



          (d) For avoidance of doubt, the parties agree that the diligence requirement provided herein
and the right to terminate the license granted will not apply to any Licensed Product that is
licensed to Licensee, to the extent Licensee is pursuing an alternate Licensed Product also
licensed from Northwestern, where the alternate Licensed Product would be competitive with the
Licensed Product licensed hereunder or it would not be commercially reasonable to pursue both the
Licensed Product licensed hereunder and the alternative Licensed Product.



 









 





          (e) The definitive license agreement shall be subject to Nanosphere’s obligation to comply
with the Bayh-Doe Act, including making practical application of all subject inventions.



     1.3 Licensee agrees to provide annual progress reports to Northwestern describing Licensee’s
research and development efforts in the development and commercialization of Licensed Products (on
a Licensed Product-by-Licensed Product basis) during the preceding year and expected efforts for
the upcoming year. Such progress reports shall be due on each Licensed Product by the end of each
calendar year. After the date of first commercial sale of a particular Licensed Product, such
Licensed Product need not be included in subsequent annual reports; provided, however, Licensee
shall continue to report on all other Licensed Products.



ARTICLE II — TERM, TERMINATION, AND CURE PROCESS




     2.1 This Agreement shall become effective on the Effective Date. Unless sooner terminated as
provided for below, this Agreement shall continue in effect, on a country-by-country basis, until
the last to expire of any Patent Rights.



     2.2 Licensee shall have the right to terminate this Agreement in whole or in part anytime by
giving Northwestern ninety (90) days written notice.



     2.3 Notwithstanding Licensee’s obligations under Article I (Due Diligence), for which the
failure to comply shall constitute a material breach of this Agreement, Northwestern shall have the
right, at its sole election, to terminate or render this license non-exclusive at any time after
three (3) years from the Effective Date if, in Northwestern’s reasonable judgment, Licensee a) has
not commercialized Licensed Product, directly or indirectly through a sublicense, thereby not
making the Licensed Product available to the public, or b) is not demonstrably engaged in research,
development, manufacturing, marketing, as appropriate, directed towards this end.



     2.4 If Licensee fails to use commercially reasonable efforts as required by Section 1.2 or if
the Parties disagree as to whether Licensee is or is not using commercially reasonable efforts as
required by Section 1.2, the Parties will meet to determine a process for curing any non-compliance
within fifteen (15) business days after Licensee has received notice of noncompliance from
Northwestern. If the Parties cannot agree on a process for curing such non-compliance within
thirty (30) days after the meeting, then either Party may initiate an arbitration as provided in
Article III and the arbitrator will determine whether Licensee is or isn’t using commercially
reasonable efforts. If the arbitrator determines that Licensee is not using commercially
reasonable efforts, then the Agreement may be terminated by Northwestern by providing written
notice thereof, which notice will be effective upon Licensee’s receipt.



     2.5 The provisions of Article ___(Confidentiality), Article ___(Payment), Article ___(Payments,
Reports and Records), Article ___(Product Liability) and Article ___(Dispute



2









 







Resolution) shall survive termination or expiration of this Agreement in accordance with their
terms.



     2.6 If: (1) Licensee makes any general assignment for the benefit of its creditors; (2) a
petition is filed by or against Licensee, or any proceeding is initiated against Licensee as a
debtor, under any bankruptcy or insolvency law, unless the laws then in effect void the
effectiveness of this provision; or (3) a receiver, trustee, or any similar officer is appointed to
take possession, custody, or control of all or any part of Licensee’s assets or property, then this
Agreement shall immediately terminate without any obligation of written notice to Licensee of such
termination.



     2.7 If either Party breaches any material obligation imposed by this Agreement then the other
Party may, at its option, send a written notice to the Party in breach that it intends to terminate
this Agreement. If the Party in breach does not cure the breach: (1) within thirty (30) days from
the notice date, where the breach is a monetary breach; or (2) within ninety (90) days from the
notice date, where the breach is a non-monetary breach, then the other Party shall have the right
to terminate this Agreement upon the date of mailing of a written notice of termination to the
Party in breach, which notice will be effective upon receipt. If the breach is not curable, the
non-breaching Party may terminate this Agreement only if the breaching party does not implement,
within the ninety (90) day period, steps that are reasonably satisfactory to the non-breaching
Party to prevent further occurrence of the same or similar breach.



     2.8 Upon termination or expiration of this Agreement for any cause, nothing herein shall be
construed to release either Party of any obligation that has matured prior to the effective date of
such termination or expiration. Licensee may, after the date of such termination, sell at the
usual price, for one hundred eighty (180) days all Licensed Products that it has in inventory, or
has accepted orders for, as of the date of termination, provided that Licensee complies with all
terms of this Agreement, including paying the earned royalty thereon.



     2.9 In the event of termination pursuant to Articles 2.3 or 2.5, Licensee agrees to no longer
use any of the Patent Rights or Know-How under which it has been granted a license, and each Party
will promptly return or destroy all Confidential Information received hereunder by such Party.



     2.10 Upon termination of this Agreement, any and all existing sublicense agreements shall
terminate or, at Northwestern’s sole election, be immediately assigned to Northwestern and
Northwestern agrees to keep them in force, provided that Northwestern’s obligations to any such
sublicensee shall be no greater than Northwestern’s obligations were to Licensee under the terms of
this Agreement.



ARTICLE III — DISPUTE RESOLUTION




     3.1 The Parties agree to effect all reasonable efforts to resolve any and all disputes between
them in connection with this Agreement in an amicable manner.



3









 





     3.2 The Parties agree that any dispute that arises in connection with this Agreement and which
cannot be amicably resolved by the Parties within thirty (30) days of notice of such dispute shall
be resolved by binding Alternative Dispute Resolution (ADR) in the manner set forth in Paragraph
3.3 through Paragraph 3.5.



     3.3 If a Party intends to begin ADR to resolve a dispute, such Party shall provide written
notice to the other Party informing the other Party of such intention and the issues to be
resolved. Within ten (10) business days after its receipt of such notice, the other Party may, by
written notice to the Party initiating ADR, add additional issues to be resolved. If the Parties
cannot agree upon the selection of a arbitrator within twenty (20) business days following receipt
of the original ADR notice, a arbitrator shall be selected by the then President of the Center for
Public Resources (CPR), 680 Fifth Avenue, New York, New York 10019. The arbitrator shall be a
single individual having experience in the biotechnology industry and with university license
agreements who shall preside in resolution of any disputes between the Parties. The arbitrator
selected shall not be an employee, director or shareholder of either Party or an Affiliate or
sublicensee.



     3.4 Each Party shall have ten (10) business days from the date the arbitrator is selected to
object in good faith to the selection of that person. If either Party makes such an objection, the
then President of the CPR shall, as soon as possible thereafter, select another arbitrator under
the same conditions as set forth above. This second selection shall be final.



     3.5 The ADR shall be conducted in the following manner:



          (a) No later than forty-five (45) business days after selection, the arbitrator shall hold a
hearing to resolve each of the issues identified by the Parties.



          (b) At least five (5) days prior to the hearing, each Party must submit to the arbitrator and
serve on the other Party a proposed ruling on each issue to be resolved. Such proposed ruling
shall contain no argument on or analysis of the facts or issues, and shall be limited to not more
than fifty (50) pages.



          (c) Each Party shall be entitled to no more than eight (8) hours of hearing to present
testimony or documentary evidence. The testimony of both Parties shall be presented during
consecutive calendar days. Such time limitation shall apply to any direct, cross or rebuttal
testimony, but such time limitation shall only be charged against the Party conducting such direct,
cross or rebuttal testimony. It shall be the responsibility of the arbitrator to determine whether
the Parties have had the eight (8) hours to which each is entitled.



          (d) Each Party shall have the right to be represented by counsel. The arbitrator shall have
the sole discretion with regard to the admissibility of any evidence.



4









 





          (e) The arbitrator shall rule on each disputed issue within thirty (30) days following the
completion of the testimony of both Parties. If the dispute is regarding whether Licensee is in
breach of a financial or diligence obligation as set forth in Sections ___, the ruling shall adopt
in its entirety the proposed ruling of one of the Parties on such disputed issue.



          (f) ADR shall take place in Chicago, Illinois. All costs incurred for a hearing room shall be
shared equally between the Parties, unless allocated to the prevailing Party(ies) by the arbitrator
as provided in paragraph 3.5(h), along with all other documented costs and expenses, including
attorneys’ fees.



          (g) The arbitrator shall be paid a reasonable fee plus expenses, which fees and expenses shall
be shared equally by the Parties, unless allocated to the prevailing Party(ies) by the arbitrator
as provided in paragraph 3.5(h), along with all other documented costs and expenses, including
attorneys’ fees.



          (h) If the dispute is regarding whether Licensee is or is not using commercially reasonable
efforts to develop and commercialize a Licensed Product, and (A) if the arbitrator determines that
Licensee is not using commercially reasonable efforts, then Licensee will bear the cost of the
hearing room and the fees and expenses of the arbitrator, and (B) if the arbitrator determines that
Licensee is using commercially reasonable efforts, then Northwestern will bear the cost of the
hearing room and the fees and expenses of the arbitrator.



          (i) The ruling shall be binding on the Parties and may be entered as an enforceable judgment
by a state or federal court having jurisdiction of the Parties.



     3.6 This Section III shall survive any termination of this Agreement.



ARTICLE IV — LIMITATION OF LIABILITY




     4.1 IN NO EVENT SHALL EITHER PARTY, ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES, INDEPENDENT
CONTRACTORS, REPRESENTATIVES, CONSULTANTS OR AGENTS BE LIABLE FOR INCIDENTAL, PUNITIVE,
CONSEQUENTIAL OR INDIRECT DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND
LOST PROFITS, LOST REVENUE, OR LOSS OF USE, REGARDLESS OF WHETHER THE PARTY SHALL BE ADVISED, SHALL
HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY.




5