TO BE VALID UNLESS AND
UNTIL IT HAS BEEN HELD TO BE INVALID OR UNENFORCEABLE BY A FINAL JUDGMENT OF A
COURT OF COMPETENT JURISDICTION FROM WHICH NO APPEAL CAN BE OR IS TAKEN OR IS
DISCLAIMED, OR REJECTED OR FOUND INVALID OR UNENFORCEABLE IN A REISSUE
APPLICATION OR RE-EXAMINATION PROCEEDING OR OTHERWISE;
(B)
IS COVERED BY ANY CLAIM BEING PROSECUTED IN
A PENDING APPLICATION DIRECTED TO THE INVENTION(S); OR
(C)
INCORPORATES ANY OF THE LICENSED MATERIALS.
2.4
"NET SALES" MEANS THE GROSS REVENUE DERIVED
BY LICENSEE FROM LICENSED PRODUCT(S), LESS THE FOLLOWING ITEMS BUT ONLY INSOFAR
AS THEY ACTUALLY PERTAIN TO THE DISPOSITION OF SUCH LICENSED PRODUCT(S) BY
LICENSEE, ARE INCLUDED IN SUCH GROSS REVENUE, AND ARE SEPARATELY BILLED:
(A)
IMPORT, EXPORT, EXCISE AND SALES TAXES, AND
CUSTOM DUTIES;
(B)
COSTS OF INSURANCE, PACKING, AND
TRANSPORTATION FROM THE PLACE OF MANUFACTURE TO THE CUSTOMER'S PREMISES OR POINT
OF INSTALLATION;
(C)
COSTS OF INSTALLATION AT THE PLACE OF USE;
AND
(D)
CREDIT FOR RETURNS, ALLOWANCES, OR TRADES.
2.5
"LICENSED FIELD OF USE" MEANS ALL USES.
2.6
"LICENSED TERRITORY" MEANS WORLDWIDE.
2.7
"EXCLUSIVE" MEANS THAT, SUBJECT TO ARTICLE
4, STANFORD SHALL NOT GRANT FURTHER LICENSES IN THE LICENSED TERRITORY IN THE
LICENSED FIELD OF USE.
2
Portions of this Exhibit were omitted and have been filed separately with the
Secretary of the Commission pursuant to the Company's application requesting
confidential treatment under Rule 24b-2 of the Exchange Act.
3.
GRANT
3.1
STANFORD HEREBY GRANTS AND LICENSEE HEREBY
ACCEPTS AN EXCLUSIVE LICENSE UNDER THE LICENSED PATENTS AND LICENSED MATERIALS
TO MAKE, HAVE MADE, IMPORT, USE, LEASE, SELL AND OFFER FOR SALE AND OTHERWISE
COMMERCIALIZE AND EXPLOIT LICENSED PRODUCTS IN THE LICENSED TERRITORY, AND
PRACTICE ANY METHOD PROCESS OR PROCEDURE WITHIN THE LICENSED PATENTS IN THE
LICENSED TERRITORY.
3.2
SAID LICENSE IS EXCLUSIVE, INCLUDING THE
RIGHT TO SUBLICENSE PURSUANT TO ARTICLE 13, IN THE LICENSED FIELD OF USE FOR A
TERM COMMENCING AS OF JULY 1, 1997 AND ENDING ON THE EXPIRATION OF THE LAST TO
EXPIRE OF THE LICENSED PATENT(S).
3.3
STANFORD SHALL HAVE THE RIGHT TO PRACTICE
THE INVENTION(S) AND USE THE TECHNOLOGY FOR ITS OWN BONA FIDE RESEARCH,
INCLUDING SPONSORED RESEARCH AND COLLABORATIONS.
STANFORD SHALL HAVE THE RIGHT
TO PUBLISH ANY INFORMATION INCLUDED IN LICENSED MATERIALS AND LICENSED
PATENT(S).
3.4
NOTWITHSTANDING SECTION 3.1 ABOVE, THE
LICENSE GRANTED TO XENOGEN FOR THOSE LICENSED MATERIALS WHICH ARE [***], SHALL
BE NON-EXCLUSIVE.
THIS SECTION 3.4 SHALL HAVE NO EFFECT ON THE EXCLUSIVE
LICENSE GRANTED HEREIN FOR (I) THE LICENSED PATENTS AND (II) ALL LICENSED
MATERIALS AND/OR LICENSED PRODUCT(S) OTHER THAN THE [***].
4.
GOVERNMENT RIGHTS
This Agreement is subject to all of the terms and conditions of Title 35 United
States Code Sections 200 through 204, including an obligation that Licensed
Product(s) sold or produced in the United States be "manufactured substantially
in the United States," and LICENSEE agrees to take all reasonable action
necessary on its part as licensee to enable STANFORD to satisfy its obligation
thereunder, relating to Invention(s), provided