Attached files
| file | filename |
|---|---|
| EX-99.1 - LANDEC CORP \CA\ | v168121_ex99-1.htm |
| 8-K - LANDEC CORP \CA\ | v168121_8k.htm |
AMENDED
AND RESTATED
LICENSE,
SUPPLY AND R&D AGREEMENT
by and
among
LANDEC
CORPORATION,
LANDEC
AG, LLC
and
MONSANTO
COMPANY
November
27, 2009
TABLE
OF CONTENTS
|
1.
|
DEFINITIONS.
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- 1
-
|
|
|
2.
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LICENSE
GRANTS AND IP OWNERSHIP.
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- 5
-
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2.1.
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License
Grants to Monsanto.
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- 5
-
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2.2.
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License
Grants to Landec.
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- 6
-
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2.3.
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Retained
Rights and Ownership.
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- 6
-
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3.
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ANNUAL
PAYMENTS AND LICENSE PURCHASE OPTION.
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- 7
-
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3.1.
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Annual
Payments
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- 7
-
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3.2.
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License
Purchase Option
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- 7
-
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3.3.
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Long-Term
Supply
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- 7
-
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3.4.
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Effects
of License Purchase
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- 8
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3.5.
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Failure
to Exercise the License Purchase Option
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- 8
-
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3.6.
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Undertakings
Relating to License Purchase Option
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- 8
-
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4.
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SUPPLY
OF LICENSED PRODUCT.
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- 9
-
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4.1.
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Supply
Agreement.
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- 9
-
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4.2.
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Monsanto’s
Responsibilities.
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- 9
-
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4.3.
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Landec’s
Responsibilities.
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-
10 -
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4.4.
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Payment.
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-
10 -
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4.5.
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Records
and Audit
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-
11 -
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4.6.
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Sole
Remedy
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-
11 -
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4.7.
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Title
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-
11 -
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5.
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SERVICES
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-
11 -
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5.1.
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Operating
Services.
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-
12 -
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5.2.
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Monsanto’s
Support Services
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-
13 -
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5.3.
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Sales
Agency.
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-
13 -
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5.4.
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Costs
of Services.
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-
14 -
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5.5.
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Records
and Audit
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-
14 -
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6.
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INTELLECTUAL
PROPERTY.
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-
14 -
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6.1.
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Filing,
Prosecution and Maintenance of Patent Rights.
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-
14 -
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6.2.
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Enforcement
of Patent Rights.
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-
17 -
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i
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6.3.
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Defense
of Third Party Infringement Action.
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-
19 -
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6.4.
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Patent
Term Restoration
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-
20 -
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7.
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CONFIDENTIALITY.
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-
21 -
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7.1.
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Confidential
Information
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-
21 -
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7.2.
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Exceptions
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-
21 -
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7.3.
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Authorized
Disclosure and Use.
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-
21 -
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7.4.
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SEC
Filings and Other Disclosures
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-
22 -
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7.5.
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Public
Announcements
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-
22 -
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8.
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REPRESENTATIONS,
WARRANTIES AND COVENANTS.
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-
22 -
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8.1.
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Representations,
Warranties and Covenants of Each Party
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-
22 -
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8.2.
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Additional
Representations, Warranties of Landec
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-
23 -
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8.3.
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Representation
by Legal Counsel
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-
23 -
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8.4.
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No
Inconsistent Agreements
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-
23 -
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8.5.
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Warranty
Disclaimer
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-
23 -
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9.
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TERM
AND TERMINATION.
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-
24 -
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9.1.
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Term
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-
24 -
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9.2.
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Termination
by Monsanto
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-
24 -
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9.3.
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Termination
for Cause
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-
24 -
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9.4.
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Effects
of Termination.
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-
25 -
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9.5.
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Survival
of Certain Obligations
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-
25 -
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10.
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INDEMNIFICATION.
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-
25 -
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10.1.
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Indemnification
by Landec.
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-
25 -
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10.2.
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Indemnification
by Monsanto
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-
26 -
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10.3.
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Conditions
to Indemnification
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-
27 -
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10.4.
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Limitations
of Indemnification.
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-
27 -
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10.5.
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Sole
Remedy
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28 -
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11.
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MISCELLANEOUS
TERMS.
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-
28 -
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11.1.
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General
Payment Terms.
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-
28 -
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11.2.
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Assignment
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-
28 -
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11.3.
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Amendment
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-
29 -
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11.4.
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Waiver
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-
29 -
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ii
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11.5.
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Governing
Law and Jurisdiction
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-
29 -
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11.6.
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UN
Convention on Contracts for Sale of Goods
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-
29 -
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11.7.
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Bankruptcy
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-
29 -
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11.8.
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Dispute
Resolution
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-
29 -
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11.9.
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Descriptive
Headings
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-
30 -
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11.10.
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Notices
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-
30 -
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11.11.
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Entire
Agreement
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-
31 -
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11.12.
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Force
Majeure
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32 -
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11.13.
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Severability
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-
32 -
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11.14.
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No
Implied License
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32 -
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11.15.
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Basis
of Bargain
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-
32 -
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11.16.
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Further
Actions
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32 -
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11.17.
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Independent
Contractors
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-
33 -
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11.18.
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Counterparts
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-
33 -
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Exhibit
A
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Non-Exclusive
Licensed Patent Rights owned by Landec Corporation
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Exhibit
B
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Non-Exclusive
Licensed Patent Rights owned by Landec Ag
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Exhibit
C
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Exclusive
Licensed Patent Rights Owned by Landec Corporation
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Exhibit
D
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Form
of Warranty and Disclaimer Language
|
iii
LICENSE,
SUPPLY AND R&D AGREEMENT
This Amended and Restated License,
Supply and R&D Agreement (this “Agreement”) is entered into as
of November 27, 2009 (the “Effective Date”), by and among
LANDEC CORPORATION, a corporation organized and existing under the laws of the
state of Delaware (“Landec
Corporation”), LANDEC AG, LLC, a limited liability company organized and
existing under the laws of the state of Delaware and a subsidiary of Landec
Corporation (“Landec
Ag,” and together with Landec Corporation, “Landec”), and MONSANTO
COMPANY, a corporation organized and existing under the laws of the state of
Delaware (together with its Affiliates referred to herein as “Monsanto”). Landec
Corporation, Landec Ag and Monsanto may each be referred to herein individually
as a “Party” and
collectively as the “Parties.”
Background
WHEREAS, Landec has developed and
commercialized a broad technology and business, including proprietary
technology, patents, technical know-how, trade secrets and other intellectual
property rights, for seed coatings and coating-related processes, and systems
designed to control and enhance germination and other seed performance
characteristics, and the formulation, application and the use of such coatings,
processes and systems, either alone or in combination with herbicides,
fungicides, insecticides, nutrients and other additives (the foregoing
collectively referred to as the “Intellicoat®
Seed Coating
Technology”);
WHEREAS, Monsanto, an agricultural
company, produces leading seed brands in large-acre crops like corn, cotton and
oilseeds (soybeans and canola);
WHEREAS, Monsanto desires to obtain,
and Landec desires to grant to Monsanto, a non-exclusive license to Landec’s
Intellicoat® Seed
Coating Technology and an exclusive license to Landec’s Controlled Release
Patent Rights (as defined below);
WHEREAS,
the Parties have previously entered into a License, Supply and R&D Agreement
dated December 1, 2006, as amended on May 29, 2009 (the “Original Agreement”) and
pursuant to Section 11.3 of the Original Agreement the Parties wish to amend and
restate the Original Agreement herein; and
NOW THEREFORE, in consideration of the
mutual promises and covenants set forth below and other good and valuable
consideration, the receipt and sufficiency of which are
hereby
acknowledged, the Parties hereby agree as follows:
Agreement
|
1.
|
Definitions.
|
|
|
1.1.
|
“Affiliate” means, with
respect to any person or entity, any other person or entity which
controls, is controlled by or is under common control with such person or
entity. A person or entity will be regarded as in control of
another entity if it owns or controls more than fifty percent (50%) of the
equity securities of the subject entity entitled to vote in the election
of directors (or, in the case of an entity that is not a corporation, for
the election of the corresponding managing
authority).
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- 1
-
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1.2.
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“Commercially Reasonable
Efforts” means those efforts, activities, measures, and resources
of a diligent Third Party active in a similar field as the Party under the
obligation to make such efforts would consider to be commercially
reasonable, feasible and viable to be performed, undertaken or made in or
under the specific circumstances.
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1.3.
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“Confidential
Information” means, with respect to each Party, proprietary data or
information that belongs in whole or in part to such Party or information
designated as Confidential Information of such Party hereunder, in all
cases that, if disclosed in writing, is marked with the words
“Confidential,” “Proprietary” or words of similar import and, if disclosed
orally or visually, is described in reasonable detail in a written notice
sent by the disclosing party to the receiving party within thirty (30)
days of the oral or visual disclosure requesting that such information be
treated as Confidential Information
hereunder.
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1.4.
|
“Control” or “Controlled” means, with
respect to any (a) item of information, including, without limitation,
Know-How, or (b) intellectual property or other right, the possession of
the right, whether directly or indirectly, and whether by ownership,
license or otherwise, to grant to the other Party access or a license,
sublicense or other right to or under such item or right without violating
the terms of any agreement or other arrangements with any Third Party
existing before or after the Effective
Date.
|
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1.5.
|
“Controlled Release Patent
Rights” means (a) the Patent Rights referred to in Exhibit C, (b)
any Patent Rights claiming Landec Improvements, and (c) any Patent Rights
maturing from applications set forth in Exhibit C or
maturing from applications in any country of the world that claim priority
to any such applications.
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1.6.
|
“Direct Costs” means the
cost of all raw materials and contract manufacturing charges (including
direct labor, but excluding the costs of Operating Services paid by
Monsanto to Landec pursuant to Section 5.4.1)
incurred by Landec in manufacturing and supplying Polymer or Formulation
ordered by Monsanto.
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1.7.
|
“Ex Works” has the
meaning set forth in Incoterms 2000, ICC Official Rules for the
Interpretation of Trade Terms, ICC Publication No.
560.
|
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1.8.
|
“Field” means Plant
Propagation Material. The Parties agree that the Field shall
include, but not be limited to, Plant Propagation Material from alfalfa,
canola, corn, cotton, soybean, cereals, sugarcane, and the use of such
treated Plant Propagation
Materials.
|
- 2
-
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1.9.
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“Formulation” means
coatings or treatments of Plant Propagation Material using Polymer or
derivatives thereof.
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1.10.
|
“Governmental Authority”
means any government or agency, instrumentality or other subdivision
thereof, including courts and tribunals, and the states, provinces and
other subdivisions thereof.
|
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1.11.
|
“Improvement” means all
Patent Rights and other intellectual property rights on any improvement to
the Polymer or derivatives thereof, methods for applying the Polymer or
derivatives thereof to Plant Propagation Material, or preparation and use
of the Formulation, whether or not patentable or copyrightable, which is
recorded, developed, conceived of, created or reduced to practice during
the performance of the Revised Work Plan during the Term. Improvements will not
include anything conducted outside the Revised Work Plan even though
conducted during the Term.
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1.12.
|
“Joint Improvement”
means any and all
Improvements created or conceived jointly by (a) Monsanto or any one or
more of its Affiliates, agents, employees, subcontractors, Third Parties
acting on their behalf or sublicensees and (b) Landec or any one or more
of its Affiliates, agents, employees, subcontractors, Third Parties acting
on their behalf or licensees,
provided that either
Party or both Parties may assist with or be involved in reduction to
practice, during the performance of the Revised Work Plan during the
Term.
|
|
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1.13.
|
“Know-How” means
inventions, discoveries, data, information, processes, methods,
techniques, materials, systems, formulations, design, expertise,
technology, or research results, whether or not patentable or
copyrightable.
|
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1.14.
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“Landec Improvements” means any
and all Improvements created or conceived solely by Landec or any one or
more of its Affiliates, agents, employees, subcontractors, Third Parties
acting on their behalf, or licensees, provided that either
Party or both Parties may assist with or be involved in reduction to
practice during the performance of the Revised Work Plan during the
Term. All Landec Improvements will be solely owned by Landec
Ag.
|
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1.15.
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“Laws” means laws,
statutes, ordinances, rules, regulations, judgments or decrees
administered, promulgated or issued by any Governmental
Authority.
|
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1.16.
|
“Licensed Know-How” means
all Know-How developed by or
on behalf of or acquired by, and in the possession or Control of,
Landec, including
Landec Improvements, which is necessary or useful to the manufacture, use
or sale of Licensed Products, or otherwise relates to the Licensed
Technology, except for any Know-How relating to the manufacture of
Polymer.
|
|
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1.17.
|
“Licensed Product” means
chemistry, including Polymer or Formulation, each of which is (a)
developed by the Parties under the Revised Work Plan and (b) covered by
the Controlled Release Patent Rights. For the avoidance of
doubt, products existing as of the Effective Date and marketed by Landec
under the trade names POLLINATOR PLUS®, INTELLICOAT®, EARLY PLANT® and
RELAY® are not included in the definition of Licensed Products under this
Agreement.
|
- 3
-
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1.18.
|
“Licensed Technology”
means the Licensed Know-How, Landec Improvements, Joint Improvements,
Controlled Release Patent Rights and Other Landec Patent
Rights.
|
|
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1.19.
|
“Major Market Countries”
means the United States, Canada, Japan, Germany, France, United Kingdom of
Great Britain, Argentina, Brazil, Chile, and the
Netherlands.
|
|
1.20.
|
“Monsanto Improvements” means any and all Improvements created
or conceived solely by Monsanto or any one or more of its Affiliates,
agents, employees, subcontractors, Third Parties acting on their behalf or
licensees, provided that either Party or both Parties
may assist with or be involved in reduction to practice during the
performance of the Revised Work Plan during the Term. All
Monsanto Improvements will be solely owned by
Monsanto.
|
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1.21.
|
“Other Landec Patent
Rights” means (a) the Patent Rights referred to in Exhibit A and
Exhibit
B, and (b) the Patent Rights maturing from applications set forth
in Exhibit
A or Exhibit B, or
maturing from applications in any country of the world that claim priority
to any such applications.
|
|
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1.22.
|
“Patent Rights” means any
and all rights under any and all (a) U.S. or foreign patents, (b) U.S. or
foreign patent applications, including without limitation,
all provisional applications, substitutions, continuations,
continuations-in-part, divisional applications, renewals, and all patents
granted thereon, (c) all patents-of-addition, reissues, reexaminations and
extensions or restorations by existing or future extension or restoration
mechanisms, including, without limitation, supplementary protection
certificates or the equivalent thereof, and (d) any other form of
government-issued right substantially equivalent to any of the
foregoing.
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1.23.
|
“Plant Propagation
Material” means all the generative parts of the plant, such as
seeds, which can be used for the multiplication of the plant and
vegetative plant material such as, but not limited to cuttings, roots,
fruits, tubers, bulbs, rhizomes, meristem tissue and parts of
plants. Also included are germinated plants and young plants, which
are transplanted after germination or after emergence from the
soil.
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1.24.
|
“Polymer” means any
polymeric material that is developed under the Revised Work
Plan.
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1.25.
|
“Purchase Price” means
120% of Direct Costs, but excluding the costs of Operating Services paid
by Monsanto to Landec Ag pursuant to Section 5.4.1,
relating to the manufacture of Polymer ordered by
Monsanto.
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- 4
-
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1.26.
|
“Territory” means
worldwide.
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1.27.
|
“Third Party” means any
person or entity other than Landec Corporation, Landec Ag or Monsanto or
their respective Affiliates.
|
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1.28.
|
Additional
Definitions. Each of the following definitions are found
in the body of this Agreement as
indicated:
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|
Section
|
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“AAA”
|
11.8.2
|
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“Annual
Payment”
|
3.1
|
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“Annual
Supply Fee”
|
4.4.1
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“Controlling
Party”
|
6.2.3
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“Disinterested
Party”
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6.1.5.1
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“Formulation
and Manufacturing Services”
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5.1.2
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“Held
Back Claims”
|
10.1.2
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“Infringement
Suit”
|
6.3.1
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“Infringer”
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6.2.1
|
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“Landec
Indemnified Party”
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10.2
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“Liability”
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10.1.1
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“License
Purchase Option”
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3.2
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“Monsanto
Indemnified Party”
|
10.1.1
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“Operating
Service(s)”
|
5
|
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“Performance
Claims”
|
10.1.1(b)
|
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“Perpetual
License Agreement”
|
3.2
|
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“Reduction
Amount”
|
4.4.3.2
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“Representatives”
|
11.8.1
|
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“Research
and Development Services”
|
5.1.1.1
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“Responsible
Party”
|
6.1.5.1
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“Revised
Work Plan”
|
5.1.1.1
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“Sales
and Marketing Services”
|
5.3.2
|
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“Specifications”
|
4.3.2
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“Sued
Party”
|
6.3.1
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“Supply
Term”
|
4.1.1
|
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“Support
Services”
|
5.2
|
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“Term”
|
9.1
|
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“Termination
Fee”
|
9.2.1
|
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2.
|
License Grants and IP
Ownership.
|
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|
2.1.
|
License Grants to
Monsanto.
|
|
|
2.1.1.
|
Exclusive Controlled Release
License. Subject to the terms and conditions of this
Agreement, Landec hereby grants to Monsanto an exclusive license under the
Controlled Release Patent Rights to (a) use, develop, market, distribute,
sell, offer for sale, import and export Licensed Products for use in the
Field during the Term in the Territory and (b) to make and have made
Formulation for use in the Field during the Term in the
Territory.
|
- 5
-
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2.1.2.
|
Non-Exclusive Patent and
Know-How License. Subject to the terms and conditions of
this Agreement, Landec hereby grants to Monsanto a non-exclusive license
to practice the Licensed Know-How and the Other Landec Patent Rights
during the Term solely to the extent necessary for Monsanto to practice
the Controlled Release Patent Rights licensed to Monsanto pursuant to
Section
2.1.1.
|
|
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2.1.3.
|
Sublicensing. Monsanto
may sublicense all or any portion of its rights and obligations under this
Agreement only with the prior written approval of Landec, which approval
will not be unreasonably withheld. Notwithstanding the
foregoing, Monsanto will be free to grant sublicenses to all or any
portion of its rights under this Agreement without Landec’s prior written
consent to authorize its customers to use Formulation made by or on behalf
of Monsanto.
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|
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2.2.
|
License Grants to
Landec.
|
|
|
2.2.1.
|
In the
Field. Subject to the terms and conditions of this
Agreement, Monsanto hereby grants to Landec a non-exclusive, royalty-free
license to exploit the Monsanto Improvements within the Field in the
Territory solely to make and use (but not sell) Licensed Products,
provided that Landec may sell Licensed Products that exploit the Monsanto
Improvements pursuant to Section
5.3.1.
|
|
|
2.2.2.
|
Outside the Field.
Subject to the terms and conditions of this Agreement, Monsanto
hereby grants to Landec a non-exclusive license for all rights to use,
develop, make, have made, market, distribute, sell, offer for sale,
import, export and otherwise exploit the Monsanto Improvements outside the
Field in the Territory. Landec will pay a reasonable royalty,
as mutually agreed, to Monsanto on net sales of products for use solely
outside the Field, which are covered by the Monsanto
Improvements.
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2.3.
|
Retained Rights and
Ownership.
|
|
|
2.3.1.
|
Licensed
Technology. Except for the licenses expressly granted
under Section
2.1, Landec retains all right, title and interest in and to the
Licensed Technology and, subject to Section 5.3.1,
is free to use the Licensed Technology in the Field in the
Territory. In addition to the foregoing, Landec is free to
transfer, license, use and otherwise exploit the Licensed Technology
outside the Field in the Territory.
|
|
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2.3.2.
|
Monsanto
Improvements. Except for the licenses expressly granted
under Section
2.2, Monsanto retains all right, title and interest in and to the
Monsanto Improvements and is free to transfer, license and otherwise
exploit the Monsanto Improvements in the
Territory.
|
- 6
-
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2.3.3.
|
Joint
Improvements. Subject to Sections
6.1.5.2 and 6.1.6.2, the
Parties are joint owners of any Joint Improvements and will have the right
to make, have made, use, develop, market, distribute, sell, offer for
sale, import and export products covered by the Joint Improvements for use
in all fields in the Territory without any compensation to the other
Party. No right or license is conveyed by this Section 2.3.3
to any Patent Right other than those Patent Rights included within the
Joint Improvements.
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2.3.4.
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Disclosure. By
the end of each calendar quarter during the Term, Landec will disclose any
material Landec Improvements promptly in writing to Monsanto and Monsanto
will disclose any material Monsanto Improvements promptly in writing to
Landec.
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3.
|
Annual Payments and License
Purchase Option.
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3.1.
|
Annual
Payments. The Parties agree and acknowledge that
Monsanto has already paid to Landec Ag seven million five hundred thousand
dollars ($7,500,000) under Section 3.1 of the Original
Agreement. On January 31 of each of the years 2010 and 2011,
Monsanto will pay to Landec Ag two million five hundred thousand dollars
($2,500,000) (each, an “Annual
Payment”).
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3.2.
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License Purchase
Option. At any time during the period starting on the
Effective Date and ending on December 1, 2011, Monsanto has the option to
purchase a perpetual, irrevocable, royalty-free, co-exclusive license
under the Controlled Release Patent Rights to (a) make and have made
Formulation for use in the Field in the Territory and (b) use, develop,
market, distribute, sell, offer for sale, import and export Licensed
Products for use in the Field in the Territory, together with a perpetual,
irrevocable, royalty-free, non-exclusive license to practice the Licensed
Know-How and the Other Landec Patent Rights solely to the extent necessary
for Monsanto to practice the Controlled Release Patent Rights licensed to
Monsanto pursuant to the foregoing (the “License Purchase
Option”) by paying ten million dollars ($10,000,000) to Landec
Corporation. Monsanto may exercise the License Purchase Option
by providing written notice to both Landec Ag and Landec Corporation of
its desire to exercise the License Purchase Option. Upon Landec
Corporation’s receipt of Monsanto’s notice, Landec Corporation and
Monsanto will negotiate and enter into a Perpetual License Agreement with
terms consistent with the provisions of this Agreement (the “Perpetual License Agreement”).
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3.3.
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Long-Term
Supply. To assist with Monsanto’s decision to exercise
the License Purchase Option, the Parties will use good faith efforts to
negotiate and agree upon the margin over Purchase Price that Monsanto will
pay Landec to manufacture and supply Polymer to Monsanto pursuant to the
supply agreement that the Parties will negotiate and enter into pursuant
to Section
3.4.2 below if Monsanto exercises the License Purchase
Option.
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3.4.
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Effects of License
Purchase. If Monsanto elects to exercise the License
Purchase Option, then the following will occur upon the effective date of
the Perpetual License Agreement:
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3.4.1.
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Acceleration of
Payments. Monsanto will pay to Landec Corporation any
unpaid Annual Payments or Annual Supply Fees that would have otherwise
been paid to Landec Ag during the Term of this
Agreement.
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3.4.2.
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Supply of
Polymer. The Parties’ obligations under Section 4 will
terminate. Landec Corporation and Monsanto will negotiate and
enter into a new supply agreement pursuant to which Monsanto will order
and purchase from Landec its total requirement of Polymer and Landec will
manufacture and sell to Monsanto an amount of Polymer equal to such total
requirement during such term, provided that Landec
(a) has the capability to meet Monsanto’s demand, (b) can manufacture
Polymer in accordance with Specifications and (c) can provide Polymer to
Monsanto at a price and on other terms that are competitive to the prices
and other terms offered by other bona fide suppliers. Subject
to any agreements reached during negotiations pursuant to Section 3.3
above, when negotiating the new supply agreement, Landec Corporation and
Monsanto will agree upon a price for the Polymer, as well as a supply
term. In addition, this supply agreement will provide that
Landec will give priority to Monsanto over any other customers in
allocating its Polymer production
capability.
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3.4.3.
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Termination of Other
Provisions. This Agreement will terminate in its
entirety and Landec Corporation and Monsanto will have no further
obligations under this Agreement, provided, however, that the
following provisions of this Agreement will survive after the effective
date of the Perpetual License Agreement: Section 2.2
(License Grants to Landec), Section 3.4
(Effects of License Purchase), Section 6
(Intellectual Property), Section 7
(Confidentiality), Section 8
(Representations, Warranties and Covenants), and Section 11
(Miscellaneous Terms).
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3.5.
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Failure to Exercise the License
Purchase Option. If Monsanto does not elect to exercise
the License Purchase Option within the time period described in Section 3.2 and
does not otherwise terminate the Agreement, then upon expiration of the
Term, Monsanto will be deemed to have terminated this Agreement pursuant
to Section
9.2 and will pay to Landec Ag the Termination Fee (described in
Section
9.2.1) on the last day of the
Term.
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3.6.
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Undertakings Relating to
License Purchase Option. As of the effective date of the
Perpetual License Agreement, no Third Party will hold any licenses or
sublicenses to any of the Controlled Release Patent Rights for use in the
Field.
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4.
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Supply of Licensed
Product.
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4.1.
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Supply
Agreement.
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4.1.1.
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Polymer. Beginning
on the Effective Date, until the end of the Term or such earlier time as
(a) the effective date of the Perpetual License Agreement or (b) the early
termination of this Agreement in accordance with Sections 9.2 or
9.3 (the
“Supply Term”),
Landec will manufacture and supply Polymer to Monsanto. During
the Supply Term, Monsanto will order and purchase from Landec under the
terms and conditions stated in this Section 4 its
total requirement of Polymer and Landec will, under the terms and
conditions stated in this Section 4,
manufacture and sell to Monsanto an amount of Polymer equal to such total
requirement.
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4.1.2.
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Formulation. At
any time during the Term, Monsanto has the option to (a) continue to order
Formulation from Landec or (b) take over all manufacturing and production
of Formulation and treatment of Plant Propagation
Materials. The Parties agree that upon Monsanto’s request and
at Monsanto’s sole expense, Landec will assist Monsanto in the transfer of
manufacturing and production of Formulation and treatment of Plant
Propagation Materials from Landec to Monsanto in order to allow Monsanto
to commence commercial production of Formulation at any time specified by
Monsanto. If so requested by Monsanto, Landec will sell to
Monsanto any equipment required by Monsanto for such manufacturing and
production which is no longer required by Landec, at a purchase price
equal to the fair market value
thereof.
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4.2.
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Monsanto’s
Responsibilities.
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4.2.1.
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Forecasts. By
the end of each calendar quarter during the Supply Term, Monsanto will
provide a non-binding six (6) month rolling forecast of its expected
requirements for Licensed Product. Within thirty (30) business
days following receipt of each such forecast, Landec will advise Monsanto
in writing whether it has the capability to provide such estimated
requirements or, if not, the amount of Licensed Products it has the
capability to provide. Landec will, in determining its
capability to provide Monsanto’s forecasted requirements, give priority to
Monsanto over any other Landec customers. If Landec does not
provide such written advice to Monsanto within such thirty (30) business
day period, Landec will be deemed to have confirmed that it has the
required capability to provide Monsanto’s forecasted
amounts.
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4.2.2.
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Purchase
Orders. From time to time, Monsanto will issue purchase
orders for Licensed Product. These purchase orders will be
binding upon Monsanto at the time of issue, and will also be binding upon
Landec to the extent the amount of Licensed Product requested in the
purchase orders does not exceed Landec’s capability as referred to in
Section
4.2.1 above. Monsanto will provide at least sixty (60)
days lead time for Licensed Product orders up to a quantity of 20,000
pounds and a lead time of at least ninety (90) days for larger Licensed
Product orders. Landec will consult with Monsanto if additional
suppliers are required to meet Monsanto’s
requirements.
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4.3.
|
Landec’s Responsibilities.
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4.3.1.
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Raw
Materials. Landec will be responsible for (a) obtaining
all raw materials, ingredients and components required to manufacture and
supply Licensed Product to Monsanto; and (b) supplying all other
facilities, equipment, materials, shipping supplies and personnel
necessary to manufacture and supply Licensed Product, provided, however, that Monsanto
will pay for such costs incurred by Landec through payment of the Purchase
Price for Licensed Product that it orders from Landec in accordance with
Section
4.4.2.
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4.3.2.
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Specifications. Landec
Ag will supply Licensed Product to Monsanto as so ordered and in
accordance with the specifications that are mutually agreed to by Landec
Ag and Monsanto during the Term (the “Specifications”). The
Specifications may be modified or updated during the Supply Term as
mutually agreed in writing by the
Parties.
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4.3.3.
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Use of Third
Parties. Landec is entitled to use one or more Third
Parties to perform all or any part of the manufacturing of Licensed
Product, including, but not limited to, the sourcing of raw materials,
components and other items used in manufacturing Licensed
Product. Landec will be responsible for ensuring that the
performance by such Third Parties complies with the applicable provisions
of this Agreement.
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4.4.
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Payment.
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4.4.1.
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Annual Supply
Fee. The Parties agree and acknowledge that Monsanto has
already paid to Landec Ag three hundred thousand dollars ($300,000) under
Section 4.4.1 of the Original Agreement. On January 31 of each
of the years 2010 and 2011, Monsanto will pay to Landec Ag one hundred
thousand dollars ($100,000) (the “Annual Supply
Fee”). In addition, if this Agreement is terminated
early in accordance with Section
9.2 (or Section 9.3, if
Landec terminates for cause), Monsanto will also owe the total amount of
two hundred thousand dollars ($200,000) in Annual Supply
Fees.
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4.4.2.
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Purchase Price. During the Supply
Term, Monsanto will purchase Licensed Product from Landec Ag for the
Purchase Price. Payment for amounts invoiced by Landec Ag will
be due and payable by Monsanto to Landec Ag within thirty (30) days after
the date of each such invoice.
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4.4.3.
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Adjustment in Purchase
Price.
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4.4.3.1.
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Increase in Direct
Costs. Landec will use Commercially Reasonable Efforts
to avoid increases to its Direct Costs, and will consult with Monsanto in
good faith, in advance, to discuss any anticipated material increases in
Direct Costs and alternatives for avoiding or minimizing such
increases. Subject to the foregoing, to the extent that
Landec’s Direct Costs do increase during the Supply Term, such increase
will be passed through to Monsanto by a corresponding increase in the
Purchase Price.
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4.4.3.2.
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Decrease in Direct
Costs. Landec will use Commercially Reasonable Efforts,
in consultation with Monsanto, to reduce its Direct Costs. To
the extent that Landec’s Direct Costs are reduced during the Supply Term
from the Direct Costs existing on the Effective Date (the “Reduction Amount”), such
Reduction Amount will be allocated 70% to Monsanto and 30% to
Landec. For example, if the Direct Costs of the Polymer were to
decrease from $4.00 to $2.00, the Direct Costs used in the calculation of
Purchase Price would be reduced from $4.00 to
$2.60.
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4.5.
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Records and
Audit. Landec will maintain complete and accurate
records which are relevant to the determination of the Purchase Price that
Monsanto pays for Polymer under this Agreement. Such records
will be open during reasonable business hours for a period of three (3)
years from the creation of individual records for examination at
Monsanto’s expense and not more often than once per year by an independent
certified public accountant selected by Monsanto. Landec’s
records and accounting information will be Confidential Information for
purposes of Section 7 of
this Agreement.
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4.6.
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Sole
Remedy. Provided that Landec has used Commercially
Reasonable Efforts to manufacture and supply Licensed Product in
accordance with the Specifications, Landec’s sole liability and Monsanto’s
sole remedy for any failure to manufacture and supply Licensed Product
pursuant to Section 4
hereof will be that Landec will manufacture and supply replacement
Licensed Product in accordance with the Specifications satisfactory to
remedy such failure.
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4.7.
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Title. All
right, title and interest in and to Licensed Product in the possession or
control of Landec will at all times remain the sole property of Landec
until delivery to Monsanto under this Agreement, Ex Works Landec facility,
or such other facility that Landec designates from time to
time.
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5.
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Services. During the Term of
this Agreement, Landec will provide to Monsanto Research and Development
Services and Formulation and Manufacturing Services as described in
Sections
5.1.1 and
5.1.2 below (each, an “Operating
Service”)
and Monsanto will
provide to Landec certain Support Services and Sales and Marketing
Services as described respectively in Sections
5.2 and 5.3.
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5.1.
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Operating
Services.
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5.1.1.
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Research & Development
Services.
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5.1.1.1.
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Revised Work
Plan. Landec will perform research, development,
formulation, biological testing and technical support services in
connection with the Licensed Technology within the Field (“Research and Development
Services”) in accordance with a mutually approved research and
development work plan, which will be modified, amended and otherwise
updated during the Term as mutually agreed by the Parties (the “Revised Work
Plan”). The Parties will create and mutually agree upon
an initial Revised Work Plan within sixty (60) days after the Effective
Date. The initial Revised Work Plan will describe the Research
and Development Services to be performed by Landec and will reflect
without limitation the following key areas: (a) development of
Polymer and Formulation, (b) manufacturing of Licensed Products, including
raw materials, coating processes and logistics, (c) testing needs (both
for research and development and in support of production), (d) process
engineering development and manufacturing support and (e) sales and
marketing efforts. The Parties may update, amend, modify,
extend or replace any Revised Work Plan upon mutual
agreement. If the Parties cannot mutually agree upon the
initial Revised Work Plan, any subsequent update, amendment, modification
or extension of the initial Revised Work Plan or new Revised Work Plan,
the Representatives will use good faith efforts pursuant to Section 11.8.1
to reach agreement.
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5.1.1.2.
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Review
Meetings. At least once per calendar quarter when Landec
is performing Research and Development Services pursuant to a Revised Work
Plan, at mutually agreeable times and locations, representatives of the
Parties’ research and development teams and business development staff
will meet either in person, by videoconference or by telephone to discuss
the progress and results or outcomes of the Research and Development
Services performed pursuant to the Revised Work Plan and any necessary
modifications, amendments or updates to the Revised Work
Plan.
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5.1.2.
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Formulation and Manufacturing
Services. In addition to
Landec’s responsibility to supply Licensed Product under the terms of
Section 4
above, Landec will provide the following services to Monsanto (“Formulation and Manufacturing
Services”): (a) Polymer and Formulation manufacturing
support, (b) Plant Propagation Material coating and treatment support, (c)
manufacturing scale-up for Polymer, Formulation and Plant Propagation
Material treatment, (d) testing and analysis associated with manufacturing
Polymer, Formulation and treatments, (e) purchasing of raw materials, and
(f) packaging and engineering support. The cost of Formulation
and Manufacturing Services will include non-labor costs such as supplies,
travel, communications, logistics cost of inventory and storage, and
depreciation on equipment.
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5.2.
|
Monsanto’s Support
Services. Monsanto will provide services to Landec Ag
that are necessary to support Landec Ag’s operations and the production
requested by Monsanto hereunder (“Support Services”),
provided that
Monsanto will have the right, after consultation with Landec, to determine
the appropriate level of staffing and resources to be allocated to such
services. Subject to the foregoing, such Support Services will
include, without limitation, the
following:
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5.2.1.
|
field
evaluation of current and new Licensed Products across several
geographies;
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5.2.2.
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logistics
support, including sourcing of raw materials, inventory control of
work-in-progress and finished goods, and shipping and distribution
services;
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5.2.3.
|
environmental
and regulatory support of Landec Ag’s lab, plant, polymer formulation and
product activities; and
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5.2.4.
|
analytical
and engineering support.
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5.3.
|
Sales
Agency.
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5.3.1.
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Appointment. As
of the Effective Date, Landec Ag designates and appoints Monsanto to act
as its exclusive sales and marketing agent for the limited purpose of
selling Licensed Products to Third Parties for use in the Field in the
Territory; provided that Landec Ag
will retain the right to sell Licensed Products directly to any Third
Parties if (a) a customer requests a direct sale from Landec, (b) Monsanto
requests that Landec make such direct sale, or (c) Monsanto elects, after
consultation with Landec, not to develop and commercialize the Licensed
Technology for a particular application in the Field. During
the Term, Landec Ag will not appoint any Third Party to act as its sales
agent in respect of Licensed Products for use in the
Field.
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5.3.2.
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Monsanto
Responsibilities. Monsanto will be responsible for the
sales program and for generating a marketing program for Licensed
Products, including promotions, promotional activities, press releases and
incentive programs (“Sales and Marketing
Services”).
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5.3.3.
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Payment for Direct
Sales. If Landec makes
any direct sale of Licensed Products to Third Parties pursuant to Section 5.3.1
above, Landec will provide written notice of such direct sale to Monsanto
within thirty (30) days of such sale. On a quarterly basis,
Landec Ag will pay to Monsanto thirty-five percent (35%) of the gross
profit received from any direct sales to Third Party
customers. For the sake of clarity, Landec will be responsible
for the costs of the Polymer used in Licensed Products sold directly under
Section
5.3.1 above.
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5.3.4.
|
Non-Solicitation. Monsanto
agrees that during the Term of this Agreement, it will not, directly or
indirectly, hire or attempt to hire any employee of Landec Corporation,
Landec Ag or any of their respective Affiliates or encourage any such
employee to terminate his or her relationship with Landec Corporation,
Landec Ag or any of their respective Affiliates, without the prior written
consent of Landec Corporation, provided that Monsanto
may make employment offers to Landec Ag’s sales and marketing
employees.
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5.4.
|
Costs of
Services.
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5.4.1.
|
Operating
Services. Monsanto is responsible for paying the costs
of the Operating Services provided by Landec Ag under this Agreement for
the period commencing on September 1, 2009 and ending on November 30,
2009, provided
however that the
amounts payable by Monsanto pursuant to this Section 5.4.1
shall not exceed three hundred and thirty thousand dollars
($330,000). Landec is responsible for paying the costs of the
Operating Services provided by Landec Ag under this Agreement on or after
December 1, 2009.
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5.4.2.
|
Invoicing and
Payment. Landec Ag will invoice Monsanto no later than
December 31, 2009 for the costs of Operating Services performed between
September 1, 2009 and November 30, 2009, and payment for such invoiced
amount will be due and payable by Monsanto to Landec Ag within thirty (30)
days after the date of such
invoice.
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5.4.3.
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Other
Services. Monsanto is also responsible for the costs it
incurs in providing Support Services or Sales and Marketing
Services.
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5.5.
|
Records and
Audit. Landec will maintain complete and accurate
records which are relevant to the determination of the cost of the
Operating Services provided by Landec to Monsanto under this Agreement for
the period commencing on September 1, 2009 and ending on November 30,
2009. Such records will be open during reasonable business
hours for a period of one (1) year from the creation of individual records
for examination at Monsanto’s expense by an independent certified public
accountant selected by Monsanto. Landec’s records and
accounting information will be Confidential Information for purposes of
Section 7
of this Agreement.
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6.
|
Intellectual
Property.
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6.1.
|
Filing, Prosecution and
Maintenance of Patent
Rights.
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6.1.1.
|
Controlled Release Patent
Rights. Landec, through counsel of its choosing, will
have primary responsibility for and control over obtaining, prosecuting
(including any interferences, reissue proceedings and re-examinations),
and maintaining throughout the world the Controlled Release Patent Rights
in the Major Market Countries. In this regard, Landec will (a)
file and prosecute patent applications to secure Patent Rights for the
Controlled Release Patent Rights in the Major Market Countries, and (b)
upon issuance, maintain such patents in full force in the Major Market
Countries.
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6.1.2.
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Other Landec Patent
Rights. Landec, through counsel of its choosing, will
have sole responsibility for and control over obtaining, prosecuting
(including any interferences, reissue proceedings and re-examinations),
and maintaining throughout the world the Other Landec Patent
Rights.
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6.1.3.
|
Monsanto
Improvements. Monsanto, through counsel of its choosing,
will have primary responsibility for and control over obtaining,
prosecuting (including any interferences, reissue proceedings and
re-examinations), and maintaining throughout the world Patent Rights in
Monsanto Improvements. In this regard, Monsanto will (a) file
and prosecute patent applications to secure Patent Rights for the Monsanto
Improvements in such countries in the Territory as determined by Monsanto
in its sole discretion and (b) upon issuance, maintain such patents in
full force in such countries. Monsanto will pay for the costs
and expenses of prosecuting and maintaining Patent Rights in the Monsanto
Improvements.
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6.1.4.
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Joint
Improvements. Landec, through counsel reasonably
acceptable to both Parties, will have primary responsibility for
obtaining, prosecuting (including any interferences, reissue proceedings
and re-examinations), and maintaining throughout the world any Patent
Rights in Joint Improvements. In this regard, Landec will (a)
file and prosecute patent applications to secure Patent Rights for the
Joint Improvements in such countries in the Territory as mutually
determined by Landec and Monsanto, (b) upon issuance, maintain such
patents in full force in such countries and (c) keep Monsanto fully
informed of all matters relating to prosecution of Patent Rights in Joint
Improvements. Subject to Section 6.1.5
and 6.1.6
below, Landec and Monsanto will share equally the external expenses
associated with the prosecution and maintenance of Patent Rights in the
Joint Improvements.
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6.1.5.
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Election not to Continue
Prosecution; Abandonment.
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6.1.5.1.
|
Step-In
Rights. If a Party with primary responsibility for
prosecuting and maintaining certain Patent Rights (i.e., Landec Ag for
Controlled Release Patent Rights and Patent Rights in Joint Improvements
and Monsanto for Patent Rights in Monsanto Improvements) (the “Responsible Party”)
elects (a) not to file and prosecute such Patent Rights in any Major
Market Country or any other country of the Territory, as applicable or (b)
not to continue the prosecution (including any interferences, oppositions,
reissue proceedings and re-examinations) or maintenance of a Patent Right
in a particular country in the Territory (the “Disinterested Party”),
then the Disinterested Party will so notify the other Party promptly in
writing of its intention in good time to enable the other Party to meet
any deadlines by which an action must be taken to establish or preserve
any such rights in such patent in such country. The
Disinterested Party will permit the other Party, should the other Party
choose to do so, at the other Party’s sole expense, to file for, or
continue to prosecute, maintain or enforce, or otherwise pursue such
Patent Rights in such country and the Disinterested Party will reasonably
cooperate with the other Party in regard
thereto.
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6.1.5.2.
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Ownership. (a) If
the Disinterested Party is Landec, and Monsanto steps-in as the
Responsible Party for prosecuting and maintaining the Controlled Release
Patent Rights or Patent Rights in Joint Improvements, Landec agrees to
assign to Monsanto all of its rights, title and interest in and to such
Patent Rights. (b) If the Disinterested Party is
Monsanto, and Landec steps-in as the Responsible Party for prosecuting and
maintaining the Patent Rights in the Monsanto Improvements, Monsanto
agrees to assign to Landec all of its rights, title and interest in and to
such Patent Rights. (c)Both Parties agree to execute and
deliver such instruments and do such acts and things, including the filing
of such assignments, agreements, documents and instruments, as may be
necessary to carry out the assignments in clauses (a) and (b)
above.
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6.1.6.
|
Patent Coverage in the
Territory.
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6.1.6.1.
|
Broadening
Coverage. If Monsanto wants to expand patent coverage of
the Controlled Release Patent Rights or Patent Rights in either Landec
Improvements or Joint Improvements, or Landec wants to expand patent
coverage of the Patent Rights in the Monsanto Improvements with respect to
other countries in the Territory, the Parties will reasonably discuss
taking such action. If the Responsible Party refuses to expand
the patent coverage in the Territory as desired by the other Party, the
Responsible Party will be considered a Disinterested Party with respect to
such country and the terms of Section 6.1.5
will apply.
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6.1.6.2.
|
Narrowing
Coverage. Monsanto or Landec has the right to refuse to
share the costs and expenses of the prosecution and maintenance of the
Patent Rights in Joint Improvements. In the event that either
Party is not interested in assuming the costs and expenses of the
prosecution and maintenance of the Patent Rights in Joint Improvements,
such Party will assign to the other Party all of its rights, title and
interest in and to the Patent Rights in Joint Improvements for which it
does not share such costs in accordance with Section
6.1.4.
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6.1.7.
|
Cooperation; Information
Disclosure. Each Party will, and will cause its
Affiliates to, cooperate fully in the preparation, filing, prosecution and
maintenance of Patent Rights, including without limitation, (a) promptly
disclosing and making available to the other Party all material
information it Controls after it first develops, learns or first
appreciates the significance of such information that is reasonably
necessary for such other Party to perform its obligations under this Section 6, and
(b) executing all papers and instruments so as to enable the other Party
to perform its obligations under this Section
6. Each Party will provide to the other Party prompt
notice as to all matters which come to its attention and which may affect
the preparation, filing, prosecution or maintenance of any Patent
Rights.
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6.2.
|
Enforcement of Patent
Rights.
|
|
|
6.2.1.
|
Notification. Each Party
will promptly report in writing to the other Party during the Term any
known infringement or suspected infringement of any of the Controlled
Release Patent Rights or Patent Rights in Landec Improvements, Monsanto
Improvements or Joint Improvements by a Third Party (an “Infringer”), and will
provide the other Party with all available evidence supporting said
infringement or suspected infringement, including without limitation, the
identity of the Infringer and the alleged infringement complained
of.
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6.2.2.
|
Enforcement Within the
Field. The Responsible Party (i.e., Landec Ag for
Controlled Release Patent Rights, Patent Rights in Landec Improvements and
Joint Improvements and Monsanto for Patent Rights in Monsanto
Improvements) will have the first right, but not the obligation, to take
any reasonable measures it deems appropriate to stop such infringing
activities by an Infringer in any part of the Territory, including
initiating or prosecuting an infringement or other appropriate suit or
action against such Infringer. In the event the Responsible
Party elects not to take action pursuant to this Section 6.2.2,
the Responsible Party will so notify the other Party promptly in writing
of its intention in good time to enable the other Party to meet any
deadlines by which an action must be taken to establish or preserve any
enforcement rights and such other Party will have the right to take any
such reasonable measures to stop such infringing activities by such
Infringer. The Responsible Party will fully cooperate with the
other Party in the event that the Responsible Party decides not to bring
an infringement action. Such cooperation will include being a
named party in any action brought by the other Party. For the
avoidance of doubt, the provisions of this Section 6.2.2
shall not apply with regard to the Other Landec Patent
Rights.
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6.2.3.
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Procedures. Each Party
will give the other Party sufficient advance notice of its intent to file
any suit pursuant to Sections 6.2.2
and the reasons therefore and each Party will provide the other Party with
an opportunity to make suggestions and comments regarding such filings,
provided, however, that the
commenting Party will provide any such comments promptly and sufficiently
in advance of any filing dates to allow for consideration by the Party
filing the suit (the “Controlling Party”), and
further provided that it will
be within the Controlling Party’s reasonable discretion whether to
incorporate such suggestions or comments. The Parties will keep
each other reasonably and timely informed of the status and progress of
the litigation, including without limitation, furnishing copies of
communications, pleadings, and other documents and keeping each Party
informed of settlement efforts, and will obtain suggestions and strategy
from the other Party, including during pre-trial motions and discovery,
provided, however, that it will
be within the Controlling Party’s reasonable discretion whether to
incorporate such suggestions or comments, but further provided that the
Controlling Party will not enter into any settlement without the prior
written consent of the other Party (which consent will not unreasonably be
withheld) if such settlement includes a finding or agreement that any
Patent Right is invalid or unenforceable. The Controlling Party
will have the sole and exclusive right to select counsel for any such suit
and action and will pay all expenses of the suit, including, but not
limited to, attorneys’ fees and court costs. Upon reasonable
request by the Controlling Party, the other Party will give the
Controlling Party all reasonable information and assistance in connection
with such suit for infringement, including allowing the Controlling Party
access to its files and documents and to its personnel who may have
possession of relevant information and, if necessary, for the Controlling
Party to prosecute any legal action, joining in the legal action as a
party.
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6.2.4.
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Recovery. Any
amounts recovered by either Party pursuant to Section 6.2.2,
whether by settlement or judgment, will be used to reimburse the Parties
for their reasonable costs and expenses (including attorneys fees)
incurred in making such recovery (which amounts will be allocated pro rata
if insufficient to cover the totality of such expenses), with any
remainder being paid to the Controlling Party. The Controlling
Party pursuing any action under Section 6.2.2
will bear all payments awarded against or agreed to be paid by such Party
pursuant to such action, including any costs or expenses incurred that
exceed the amounts recovered by such
Party.
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6.2.5.
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Declaratory
Judgments. Each Party will provide the other Party with
immediate written notice of any declaratory judgment action or other claim
or action brought by a Third Party in the Territory that alleges the
invalidity, unenforceability or noninfringement of any Controlled Release
Patent Right or any Patent Right in Landec Improvements, Monsanto
Improvements or Joint Improvements. The Responsible Party will
have the first right, but not the obligation, at its own expense, to
defend the Patent Rights in any such declaratory judgment
action. The Responsible Party will notify the other Party
within fifteen (15) business days of receiving written notice of such
declaratory judgment action as to whether it intends to defend such
declaratory judgment action (or if appropriate such lesser period as is
necessary so as to give the other Party a reasonable period in which to
respond to such declaratory judgment action). If, after the
expiration of such period, the Responsible Party has not notified the
other Party of its intent to defend such declaratory judgment action, then
the other Party will have the right, but not the obligation, to defend
such declaratory judgment action, provided that the
Responsible Party will fully cooperate with the other Party in the event
that the Responsible Party decides not to defend such declaratory judgment
action. Furthermore, the Responsible Party will bear all the
expenses of such litigation. Neither Party will consent to the
entry of any judgment or enter into any settlement with respect to such
declaratory judgment action without the prior written consent of the other
Party (which consent will not unreasonably be withheld) if such judgment
or settlement includes a finding or agreement that any Patent Right is
invalid or unenforceable, or would enjoin or grant other equitable relief
against the other Party. Each Party will cooperate (including
by executing any documents required to enable the other Party to
participate in such litigation) with the other Party in the defense of any
declaratory judgment action brought by a Third Party relating to the
Patent Rights in accordance with this Section 6.2.5
and will have the right to consult with the other Party and to participate
in and be represented by independent counsel in such litigation at its own
expense.
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6.3.
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Defense of Third Party
Infringement Action.
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6.3.1.
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Notice. In
the event of any actual or threatened suit against a Party or the
Affiliates or sublicensees of a Party (the “Sued Party”) alleging
that commercialization of the Licensed Products in the Territory infringes
or will infringe such Third Party’s Patent Rights (an “Infringement Suit”), the
Sued Party will promptly give written notice of such Infringement Suit to
the other Party.
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6.3.2.
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Landec’s Right to
Defend. Landec will have the first right, but not the
obligation, through counsel reasonably acceptable to Monsanto, to assume
direction and control of the defense of claims arising from the practice
of technology covered by the Controlled Release Patent Rights or Patent
Rights in Landec Improvements and Joint Improvements, including the right
to settle such claims, provided that (i)
Landec will obtain the prior written consent of Monsanto to settle such
claims, and (ii) to the extent Monsanto is a named party to the
Infringement Suit, Monsanto may, upon written notice to Landec, assume at
Monsanto’s cost its own defense of any claims against Monsanto in such
suit, in which event Landec will have no authority to act on Monsanto’s
behalf with respect to the defense of such
claims.
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6.3.3.
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Monsanto’s Right to
Defend. Monsanto will have the first right, but not the
obligation, through counsel reasonably acceptable to Landec, to assume
direction and control of the defense of claims arising from the practice
of Monsanto Improvements, including the right to settle such claims, provided that (i)
Monsanto will obtain the prior written consent of Landec (which consent
will not unreasonably be withheld) if such settlement includes a finding
or agreement that any Patent Right in a Monsanto Improvement is invalid or
unenforceable or otherwise adversely affects Landec, and (ii) to the
extent Landec is a named party to the Infringement Suit, Landec may, upon
written notice to Monsanto, assume at Landec’s cost its own defense of any
claims against Landec in such suit, in which event Monsanto will have no
authority to act on Landec’s behalf with respect to the defense of such
claims.
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6.3.4.
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Cooperation and
Communication. Upon the other Party’s request and at the
other Party’s expense, each Party will offer reasonable assistance in
connection with the defense of an Infringement Suit. Each Party
will keep the other Party reasonably and timely informed of the status and
progress of the litigation and will provide the other Party with the
opportunity to make suggestions and comments regarding such defense, provided, however, that the other
Party will provide any such comments sufficiently in advance of any filing
dates to allow for consideration by Party responsible for defending the
Infringement Suit, and further provided that it will
be within such responsible Party’s reasonable discretion whether to
incorporate such suggestions or comments. If a Party notifies
the other Party in writing that it does not wish to assume direction and
control of defending an Infringement Suit pursuant to either Section 6.3.2
or 6.3.3,
the other Party will have the right, but not the obligation to, at its
sole cost and expense, to defend against such claims, provided, however, that such
Party will obtain the written consent of the other Party prior to ceasing
to defend, settling or otherwise compromising such
claims.
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6.4.
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Patent Term
Restoration. The Parties hereto will cooperate with each
other in obtaining patent term restoration in the Territory where
applicable to the Controlled Release Patent Rights related to any Licensed
Product, including under 35 U.S.C. § 156. If elections with
respect to obtaining such patent term restoration are to be made, Landec
will make such election and Monsanto will abide by such
election.
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7.
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Confidentiality.
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7.1.
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Confidential
Information. Each Party will treat as confidential all
Confidential Information of the other Party, will not use such
Confidential Information except as set forth in this Agreement, and will
use its best efforts not to disclose such Confidential Information to any
Third Party. Without limiting the foregoing, each of the
Parties will use at least the same degree of care which it uses to prevent
the disclosure of its own Confidential Information of like importance to
prevent the disclosure of Confidential Information disclosed to it by the
other Party under this Agreement. Each Party will disclose
Confidential Information of the other Party only to its directors,
officers, employees, consultants and advisors who have a need to know such
information in order for such Party to carry out the activities and
transactions contemplated by this Agreement. Each Party will
promptly notify the other Party of any actual or suspected misuse or
unauthorized disclosure of the other Party’s Confidential
Information.
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7.2.
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Exceptions. Notwithstanding
the above, neither Party will have liability to the other with regard to
any Confidential Information of the other which the receiving Party can
prove:
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7.2.1.
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was
generally available to the public or otherwise part of the public domain
at the time of its disclosure to the receiving
Party;
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7.2.2.
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became
generally available to the public or otherwise part of the public domain
after its disclosure or development, as the case may be, other than
through any act or omission of the receiving
Party;
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7.2.3.
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was
known by the receiving Party, without restriction, at the time of
disclosure by the disclosing party and the receiving party has documentary
evidence to that effect;
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7.2.4.
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was
disclosed to the receiving Party, without restriction, by a Third Party
who had no obligation to the disclosing Party not to disclose such
information to others; or
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7.2.5.
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was
independently discovered or developed by or on behalf of the receiving
Party without the use of any Confidential Information belonging to the
disclosing Party and the receiving Party has documentary evidence to that
effect.
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7.3.
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Authorized Disclosure and
Use.
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7.3.1.
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Disclosure. Notwithstanding
the foregoing provisions of Section 7.1,
each Party may disclose Confidential Information belonging to the other
Party to the extent such disclosure is reasonably necessary
to:
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7.3.1.1.
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file
or prosecute patent applications as contemplated by this
Agreement;
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7.3.1.2.
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prosecute
or defend litigation; and
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7.3.1.3.
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comply
with applicable Laws and
regulations.
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7.3.2.
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Advanced
Notice. In the event a Party will deem it reasonably
necessary to disclose Confidential Information belonging to the other
Party pursuant to Section 7.3.1
above, the disclosing Party will to the extent possible give reasonable
advance notice of such disclosure to the other Party and take reasonable
measures to ensure confidential treatment of such
information.
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7.3.3.
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Use. Notwithstanding
the foregoing provisions of Section 7.1,
each Party will have the right to use the other Party’s Confidential
Information in carrying out its responsibilities or exercising its rights
under this Agreement, or as otherwise expressly authorized by this
Agreement.
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7.4.
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SEC Filings and Other
Disclosures. Either Party may disclose the terms of this
Agreement (a) to the extent required, in the reasonable opinion of such
Party’s legal counsel, to comply with applicable Laws, including, without
limitation, the rules and regulations promulgated by the United States
Securities and Exchange Commission and (b) in connection with a
prospective acquisition, merger, financing or license for such Party, to
prospective acquirers or merger candidates or to existing or potential
investors or licensees, provided that prior to
such disclosure each such candidate or investor will be agree in writing
to be bound by obligations of confidentiality and non-use at least
equivalent in scope to those set forth in this Section
7. If a Party discloses this Agreement or any of the
terms hereof in accordance with Section 7.4(a),
such Party agrees, at its own expense, to seek confidential treatment of
portions of this Agreement or such terms, as may be reasonably requested
by the other Party.
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7.5.
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Public
Announcements. The Parties agree that either Party may
make a public announcement regarding this Agreement or concerning the
subject of this Agreement, provided that the other
Party has a chance to review and comment prior to the release of such
public announcement.
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8.
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Representations,
Warranties and
Covenants.
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8.1.
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Representations, Warranties and
Covenants of Each Party. Each of the Parties represents,
warrants, and covenants to the other Parties as
follows:
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8.1.1.
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It
is a corporation or entity duly organized and validly existing under the
laws of the state or other jurisdiction of its incorporation or
formation.
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8.1.2.
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The
execution, delivery and performance of this Agreement by such Party has
been duly authorized by all requisite corporate action and does not
require any shareholder action or
approval.
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8.1.3.
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It
has the power and authority to execute and deliver this Agreement and to
perform its obligations hereunder.
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8.1.4.
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The
execution, delivery and performance by such Party of this Agreement and
its compliance with the terms and provisions hereof does not and will not
conflict with or result in a breach of any of the terms and provisions of
or constitute a default under (i) the provisions of its charter or
operative documents or bylaws; (ii) any order, writ, injunction or decree
of any court or governmental authority entered against it or by which any
of its property is bound; or (iii) any applicable law, rule, regulation or
permit.
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8.1.5.
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It
will at all times comply with all material laws and regulations applicable
to its activities under this
Agreement.
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8.2.
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Additional Representations,
Warranties of Landec. In addition to the
representations, warranties and covenants made by Landec elsewhere in this
Agreement, Landec hereby represents, warrants, and covenants to Monsanto
that:
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8.2.1.
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Landec
solely owns all right, title and interest in the Licensed Technology or
otherwise has the right to grant the licenses granted hereunder and that
Exhibits
A, B and C are, to the
best of Landec’s knowledge, complete and accurate as of the Effective
Date.
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8.2.2.
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As
of the Effective Date, the Controlled Release Patent Rights and Other
Landec Patent Rights are existing and, to the best of Landec’s knowledge,
are not invalid or unenforceable, in whole or in
part.
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8.2.3.
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To
the best of Landec’s knowledge, the practice of the Controlled Release
Patent Rights and Other Landec Patent Rights and the commercialization of
any Licensed Product in the Field do not and will not infringe any issued
patents or other intellectual property rights owned or possessed by any
Third Party, and Landec has not received any charge, complaint, demand or
notice alleging such infringement.
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8.3.
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Representation by Legal
Counsel. Each Party hereto represents that it has been
represented by legal counsel in connection with this Agreement and
acknowledges that it has participated in the drafting
hereof. In interpreting and applying the terms and provisions
of this Agreement, the Parties agree that no presumption will exist or be
implied against the Party which drafted such terms and
provisions.
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8.4.
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No Inconsistent
Agreements. No Party has in effect and after the
Effective Date no Party will enter into any oral or written agreement or
arrangement that is or would be inconsistent with its obligations under
this Agreement.
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8.5.
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Warranty
Disclaimer. THE FOREGOING WARRANTIES OF LANDEC ARE IN
LIEU OF ANY OTHER WARRANTIES, AND THE LICENSED TECHNOLOGY, POLYMER AND
FORMULATION ARE PROVIDED TO MONSANTO “AS IS” AND WITHOUT ANY WARRANTY OF
ANY KIND, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED
WARRANTIES OF MERCHANTABILITY OR ANY IMPLIED WARRANTIES OF FITNESS FOR A
PARTICULAR PURPOSE, ALL OF WHICH ARE HEREBY SPECIFICALLY EXCLUDED AND
DISCLAIMED.
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9.
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Term and
Termination.
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9.1.
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Term. If not
earlier terminated as provided in this Section 9, and
subject to Section 3.4.3,
the term of this Agreement (the “Term”) shall expire on
December 1, 2011.
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9.2.
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Termination by
Monsanto. Monsanto may terminate this Agreement at any
time during the Term, provided that Monsanto
complies with the following
conditions:
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9.2.1.
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Termination
Fee. At the time of termination, Monsanto will pay four
million dollars ($4,000,000) (the “Termination Fee”) to
Landec Ag; and
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9.2.2.
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Annual Payments and Annual
Supply Fees. Notwithstanding termination of this
Agreement, Monsanto will continue to owe any remaining Annual Payments and
Annual Supply Fees in accordance with the payment schedules set forth in
Sections
3.1 and 4.4.1,
respectively, provided, however, that Monsanto,
at its election, may accelerate the payment schedules and pay to Landec Ag
the total remaining Annual Payments and Annual Supply Fees upon the date
of termination of this Agreement, and will accelerate such payment
schedules upon exercise of the License Purchase Option in accordance with
Section
3.4.1
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9.3.
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Termination for
Cause. Either Party may terminate this Agreement at any
time during the Term by giving written notice to the other Party in the
event that the other Party commits a material breach of its obligations
under this Agreement and such breach remains uncured for sixty (60) days,
measured from the date written notice by certified carrier or equivalent
of such breach is given to the breaching Party, provided, however, that if such
breach is not susceptible of cure within the stated period and the
breaching Party uses diligent, good faith efforts to cure such breach, the
stated period will be extended by an additional sixty (60)
days. If the alleged breach relates to nonpayment of any amount
due under this Agreement, the sixty (60) day cure period will be tolled
pending resolution of any bona fide dispute between the Parties as to
whether such payment is due. If Landec terminates this
Agreement under this Section 9.3 due to
Monsanto’s uncured material breach, then on the date of termination,
Monsanto will owe the Termination Fee and any remaining Annual Payments or
Annual Supply Fees that would have been paid by Monsanto had this
Agreement not been terminated by Landec under this Section
9.3. If Monsanto terminates this Agreement under this
Section 9.3
due to Landec’s uncured material breach, then Monsanto will not be
required to pay any Termination Fee or any remaining Annual Payments or
Annual Supply Fees. Any dispute over what constitutes an
uncured material breach by a Party will be resolved pursuant to the
dispute resolution mechanisms under Section
11.8.
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9.4.
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Effects of
Termination.
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9.4.1.
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Upon
termination of this Agreement under Section 9.2 or
9.3, all
rights and licenses granted by Landec to Monsanto hereunder will
automatically terminate.
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9.4.2.
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Except
as expressly provided herein, the termination of this Agreement will not
relieve the Parties of any obligation accruing prior to
termination. Any and all Confidential Information and materials
provided pursuant to this Agreement will be promptly returned to the
disclosing party or destroyed at the written request of the disclosing
party.
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9.4.3.
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Upon
termination of this Agreement for any reason, all sublicenses granted by
Monsanto will terminate, although both Monsanto and its sublicensees may,
after termination, sell Licensed Product in inventory at the time of
termination.
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9.5.
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Survival of Certain
Obligations. The following provisions of this Agreement
will survive the termination of the Agreement: Section 2.2
(License Grants to Landec), Section 6
(Intellectual Property), Section 7
(Confidentiality), Section 8
(Representations, Warranties and Covenants, Section 9.4
(Effects of Termination), Section 9.5 and
Section
11 (Miscellaneous Terms). Any expiration or early
termination of this Agreement will be without prejudice to the rights of
either Party against the other accrued or accruing under this Agreement
before termination.
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10.
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Indemnification.
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10.1.
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Indemnification by
Landec.
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10.1.1.
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Subject
to Section
10.3 below, until the end of the Term or such earlier time as (a)
the effective date of the Perpetual License Agreement or (b) the early
termination of this Agreement in accordance with Sections 9.2 or
9.3,
Landec will indemnify, defend and hold harmless Monsanto and its
directors, officers, employees and agents (each, a “Monsanto Indemnified
Party”) from and against any and all liability, loss, damage,
expense (including reasonable attorneys’ fees and expenses) and cost
(collectively, a “Liability”) that a
Monsanto Indemnified Party may be required to pay to one or more Third
Parties resulting from or arising out
of:
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(x) any
claims of any nature by Third Parties to the extent arising out of the actual or
alleged infringement or violation of any Third Party right by exploitation of
the Controlled Release Patent Rights or and Other Landec Patent Rights in the
manner contemplated by this Agreement; or
(y) any
claims (or series of related claims) by Third Parties relating to or arising out
of any alleged failure of, or deficiency in the Formulation performance (“Performance Claims”), subject
to the limitations of Section 10.1.2 below;
provided that Landec
will only be responsible for indemnification under this Section 10.1.1(b) if
(i) such Performance Claims relate to Licensed Product sold by Monsanto during
the first year of the Term and (ii) when Monsanto sold Licensed Product to the
Third Party making the Performance Claim, Monsanto used the same contractual
limitation of liability and warranty disclaimer language as used by Landec when
Landec sold Licensed Product prior to the Effective Date, the form of which
appears on Exhibit
D.
(z) the
material breach by Landec of any of its representations, warranties or covenants
set forth herein, except, in each case, to the extent caused by the gross
negligence or willful misconduct of Monsanto or any Monsanto Indemnified
Party.
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10.1.2.
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Notwithstanding
Section
10.1.1, Landec’s obligations under Section 10.1
will not apply to any Liability to the extent it arises out
of:
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(a)
specifications
provided by Monsanto that are prepared without collaboration with
Landec;
(b)
modifications
of any Licensed Technology at the request of Monsanto, which are not covered by
Landec Improvements, or that materially alter the form or functionality
thereof;
(c)
any
claims of any nature by Third Parties to the extent arising out of the actual or
alleged infringement or violation of any Third Party right by Monsanto’s
exploitation of the Monsanto Improvements; or
(d)
combinations
of any of the Licensed Technology by Monsanto with any product not provided by
Landec, provided that
such combination materially alters the form or function of the Licensed
Technology or that such Liability arises out of or relates to the use of such
non-Landec product (clauses (a), (b), (c), and (d) are herein collectively
referred to as “Held Back
Claims”).
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10.2.
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Indemnification by
Monsanto. Subject to Section 10.3
below, until the end of the Term or such earlier time as (a) the effective
date of the Perpetual License Agreement or (b) the early termination of
this Agreement in accordance with Sections 9.2 or
9.3,
Monsanto will indemnify, defend and hold harmless Landec and their
respective directors, officers, employees and agents (each, a “Landec Indemnified
Party”) from and against all Liabilities that a Landec Indemnified
Party may be required to pay to one or more Third Parties resulting from
or arising out of:
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(a) any Held Back Claim;
or
(b)
any
claims of any nature by Third Parties to the extent arising out of any Licensed
Product sold by Monsanto, except to the extent that Monsanto is entitled to
indemnification from Landec under Section 10.1
above.
(c) the
material breach by Monsanto of any of its representations, warranties or
covenants set forth herein, except, in each case, to the extent caused by the
gross negligence or willful misconduct of Landec or any Landec Indemnified
Party.
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10.3.
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Conditions to
Indemnification. In any claim for defense or
indemnification hereunder, the indemnified party must (a) give the
indemnifying party prompt written notice of the applicable claim; (b)
reasonably cooperate with the indemnifying party at the indemnifying
party’s request and expense, in the defense or settlement of the claim;
and (c) give the indemnifying party the right to control the defense or
settlement of the claim, except that the indemnifying party will not enter
into any settlement that adversely affects the indemnified party’s rights
or obligations without the indemnified party’s proper express written
consent, which will not be unreasonably withheld or
delayed. The indemnified party may participate in the defense
or settlement of any such claim at its own expense with counsel of its
choosing. Notwithstanding the foregoing, any failure of the
indemnified party to comply with the provisions of this Section 10.3
will not relieve the indemnifying party of any defense or indemnity
obligations hereunder except to the extent that the indemnifying party is
prejudiced by such failure.
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10.4.
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Limitations of
Indemnification.
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10.4.1.
|
Limitation of Obligations and
Liability. Notwithstanding anything to the contrary,
neither Landec nor Monsanto will be obligated to indemnify the other Party
pursuant to Sections 10.1
or 10.2
above unless and until the total amount of losses incurred by the other
Party exceeds two hundred and fifty thousand dollars ($250,000) (the
“Threshold”) in
the aggregate, at which time the indemnifying party will be responsible
for all losses and not just those losses in excess of the
Threshold. In no event will either Landec or Monsanto be liable
under this Agreement for any amounts aggregating in excess of five million
dollars ($5,000,000) (the “Cap”), provided, however, that (a) the
Cap will not apply to any payments owed by Monsanto to Landec pursuant to
this Agreement and (b) neither the Threshold nor the Cap will apply to
Landec’s indemnification obligations under Section
10.1.1(b) to the extent there are Performance Claims during the
first year of the Term.
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10.4.2.
|
Incidental and Consequential
Damages. NO PARTY WILL BE LIABLE UNDER ANY CONTRACT,
NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY FOR ANY
PUNITIVE, SPECIAL, INCIDENTAL, CONSEQUENTIAL OR OTHER INDIRECT DAMAGES
ARISING OUT OF OR IN CONNECTION WITH THIS AGREEMENT OR ITS SUBJECT MATTER,
EXCEPT IN CONNECTION WITH A BREACH OF SECTION 7 ABOVE
OR FOR LIABILITY ARISING OUT OF A PARTY EXCEEDING THE SCOPE OF ANY LICENSE
GRANTED TO SUCH PARTY HEREUNDER.
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10.5.
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Sole
Remedy. The indemnification obligations under this Section 10 will
be the indemnifying Party’s sole obligation and the indemnified Party’s
sole remedy with respect to any breach of Section 8 or
other event giving rise to indemnification
hereunder.
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11.
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Miscellaneous
Terms.
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11.1.
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General Payment
Terms.
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11.1.1.
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Currency. All
amounts payable and calculations hereunder will be in United States
dollars.
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11.1.2.
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Wire
Transfer. All payments by Monsanto to under
this Agreement will be by wire transfer of immediately available funds in
U.S. dollars to the bank account(s) designated in writing by
Landec.
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11.1.3.
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Late
Payments. If any payment due under this Agreement,
including, without limitation, Annual Payments under Section 3.1,
Annual Supply Fees under Section
4.4.1,
invoiced amounts for the supply of Polymer under Section 4.4.2,
or invoiced amounts for Operating Services under Section 5.4.1,
is overdue by more than thirty (30) days, Monsanto will pay interest on
such overdue amount at an annual percentage rate equal to the Prime Rate
(as published in the “Money Rates” table of The Wall Street Journal on the
due date) plus five percent (5%).
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11.2.
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Assignment. Neither
this Agreement nor any interest hereunder will be assignable by either
Party without the prior written consent of the other Party, which consent
will not be unreasonably withheld or delayed. Notwithstanding
the foregoing, a Party may make such an assignment without the other
Party’s consent to Affiliates or to a successor to substantially all of
the business of such Party to which this Agreement relates, whether
pursuant to a merger, sale of stock, sale of assets or other
transaction. This Agreement will be binding upon the successors
and permitted assigns of the Parties and the name of a Party appearing
herein will be deemed to include the names of such Party’s successors and
permitted assigns to the extent necessary to carry out the intent of this
Agreement. Any assignment not in accordance with this Section 11.2
will be null and void.
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11.3.
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Amendment. No
amendment, modification or supplement of any provision of this Agreement
will be valid or effective unless made in writing and signed by a duly
authorized officer of each Party.
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11.4.
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Waiver. No
provision of the Agreement will be waived by any act, omission or
knowledge of a Party or its agents or employees except by an instrument in
writing expressly waiving such provision and signed by a duly authorized
officer of the waiving Party.
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11.5.
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Governing Law and
Jurisdiction. This Agreement, the rights of the Parties
and all claims arising under or in connection herewith, will be governed
by and interpreted in accordance with the domestic substantive laws of the
State of New York, without regard to any choice or conflict of law
principles that would cause the application of the laws of any other
jurisdiction, and will be subject to the exclusive jurisdiction of the
State and Federal Courts located in New York, New
York.
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11.6.
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UN Convention on Contracts for
Sale of Goods. The parties expressly agree that the
United Nations Convention on Contracts for the International Sale of Goods
will not apply to this Agreement.
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11.7.
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Bankruptcy. The
Parties agree that the licenses granted hereunder are subject to Section
365(n) of the U.S. Bankruptcy Code.
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11.8.
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Dispute
Resolution. Any disputes, other than disputes regarding
the construction, validity or enforcement of patents (which disputes will
be resolved by legal proceedings to be held subject to the requirements
of Section 11.5
(Governing Law and Jurisdiction)), arising between the Parties relating
to, arising out of or in any way connected with this Agreement or any term
or condition hereof, or the performance by either Party of its obligations
hereunder, whether before or after termination of this Agreement, will be
resolved as follows:
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11.8.1.
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Senior
Management. Within sixty (60) days after the request of
any Party that reasonably believes the Parties have been unable to resolve
a matter, the chief executive officer of Landec Corporation and the
Executive Vice President – North America Commercial of Monsanto (or their
designees) (the “Representatives”), will
meet in person at a mutually acceptable time and location or by means of
telephone or video conference to attempt to resolve the matter or
negotiate a settlement.
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11.8.2.
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Arbitration. If
the Representatives are not able to resolve the dispute within thirty (30)
days of their first meeting or within such extended period as they agree
upon, either Party may submit the matter to binding arbitration in
accordance with this Section
11.8.2. Except as specified below, the arbitration will
be conducted in accordance with the rules of, and under the auspices of,
the American Arbitration Association (the “AAA”). The
arbitration will be conducted by a single arbitrator with relevant
technical expertise who is jointly selected by the Parties or, if the
Parties cannot mutually agree, is selected by the AAA administrator and is
not employed by and does not have a material financial relationship with,
a Party or any of its Affiliates or sublicensees. The location
of the arbitration will be in New York, New York. This
Agreement will remain in effect pending completion of the proceedings
brought under this Section 11.8.2. Within
ten (10) business days after the arbitrator is selected, each Party will
submit to the arbitrator that Party’s proposed resolution of the dispute
and justification therefor. All arbitration proceedings must be
completed within thirty (30) days after the arbitration is
convened. The Parties hereby agree that the arbitrator has
authority to issue rulings and orders regarding all procedural and
evidentiary matters that the arbitrator deems reasonable and necessary
with or without petition therefor by the Parties as well as the final
ruling and judgment. Rulings will be issued by written order
summarizing the arbitration proceedings. Any judgment or
award by the arbitrator in any dispute will have the same force and effect
as the final judgment of a court of competent
jurisdiction. Nothing in this arbitration clause will prevent
either Party from seeking a pre-award attachment of assets or preliminary
relief to enforce its rights in intellectual property or confidentiality
obligations under this Agreement, or to enjoin any event that might cause
irreparable injury, in a court of competent jurisdiction prior to an award
on the merits by the arbitrator.
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11.9.
|
Descriptive
Headings. The descriptive headings of this Agreement are
for convenience only and will be of no force or effect in construing or
interpreting any of the provisions of this
Agreement.
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11.10.
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Notices. Any consent,
notice or report required or permitted to be given or made under this
Agreement by one of the Parties hereto to the other will be in writing and
delivered by hand or sent by nationally recognized overnight delivery
service, prepaid registered or certified air mail, or by facsimile
confirmed by prepaid, registered or certified mail letter, and will be
deemed to have been properly served to the addressee upon receipt of such
written communication, in any event to the following
addresses:
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If to
Landec Corporation, to:
3603 Haven Avenue
Menlo Park, CA 94025
Attention: Chief Financial
Officer
Phone: (650)
306-1650
Fax: (650)
368-9818
- 30
-
If to
Landec Ag, to:
Natarajan Balachander,
Ph.D.
Vice President, Research and
Manufacturing
201 N. Michigan
Oxford, Indiana 47971
Phone: (765) 385-1000 ext.
101
Fax: (765)
385-0598
With a
copy to:
Ropes
& Gray LLP
One
Embarcadero Center Suite 2200
San
Francisco, CA 94111-3627
Boston,
MA 02110
Attn: Geoff
Leonard, Esq.
Phone: 415-315-6300
Fax: 415-315-6350
If to
Monsanto, to:
Monsanto
Company
800 N.
Lindbergh Boulevard
St.
Louis, Missouri 63167
Telephone: (314)
694-1000
Telecopier: (314)
694-6399
Attn:
Vice President - Manufacturing
With copy
to:
Monsanto
Company
800 N.
Lindbergh Boulevard
St.
Louis, Missouri 63167
Telephone: (314)
694-1000
Telecopier: (314)
694-6399
Attn:
General Counsel’s Office
With an
additional copy to:
Bryan
Cave LLP
One
Metropolitan Square
211 N.
Broadway, Suite 3600
St.
Louis, Missouri 63102
Telephone: (314)
259-2455
Telecopier: (314)
259-2020
Attn: Denis
P. McCusker
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11.11.
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Entire
Agreement. This Agreement, together with all exhibits
hereto, constitutes and contains the complete, final and exclusive
understanding and agreement of the Parties and cancels and supersedes any
and all prior negotiations, correspondence, understandings and agreements,
whether oral or written, between the Parties respecting the subject matter
hereof and thereof, including the Original
Agreement.
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11.12.
|
Force Majeure. Except
for obligations to make payments under this Agreement, neither Party will
be liable to the other for delay or failure in the performance of the
obligations on its part contained in this Agreement if and to the extent
that such failure or delay is caused by acts of God, war, terrorism
(actual or threatened), strikes, revolutions, lack or failure of
transportation facilities, Laws or other causes that are beyond the
reasonable control of such Party. A Party will notify the other
Party promptly in the event any force majeure event arises, giving an
indication of the likely extent and duration thereof, and will use all
Commercially Reasonable Efforts to resume performance of its obligations
as soon as practicable, provided, however, that neither
Party will be required to settle any labor dispute or
disturbance. In the event that a Party’s performance is
suspended for more than six (6) months because of a Force Majeure Event,
the Parties hereto will consult with each other to determine whether this
Agreement should be modified. In no event will this Section 11.12
serve to extend the Term of this
Agreement.
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11.13.
|
Severability. If
any clause or portion thereof in this Agreement is for any reason held to
be invalid, illegal or unenforceable, the same will not affect any other
portion of this Agreement, as it is the intent of the Parties that this
Agreement will be construed in such fashion as to maintain its existence,
validity and enforceability to the greatest extent possible. In
any such event, this Agreement will be construed as if such clause of
portion thereof had never been contained in this Agreement, and there will
be deemed substituted therefore such provision as will most nearly carry
out the intent of the Parties as expressed in this Agreement to the
fullest extent permitted by applicable
law.
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11.14.
|
No Implied
License. Each Party recognizes that except for the
licenses expressly set forth in this Agreement, nothing in this Agreement
will be construed as granting a license, whether by implication, operation
of law or otherwise.
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11.15.
|
Basis of
Bargain. Each Party recognizes and agrees that the
warranty disclaimers and liability and remedy limitations in this
Agreement are material bargained for bases of this Agreement and that they
have been taken into account and reflected in determining the
consideration to be given by each Party under this Agreement and in the
decision by each Party to enter into this
Agreement.
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11.16.
|
Further
Actions. Each Party agrees to execute, acknowledge and
deliver such further instruments, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of
the Agreement.
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11.17.
|
Independent
Contractors. Both Parties are independent contractors
under this Agreement. With the exception of sales and marketing
agency relationship created under Section 5.3,
nothing herein contained will be deemed to create an employment, agency,
joint venture or partnership relationship between the Parties hereto or
any of their agents or employees, or any other legal arrangement that
would impose liability upon one Party for the act or failure to act of the
other Party. With the exception of sales and marketing agency
relationship created under Section 5.3,
neither Party will have any express or implied power to enter into any
contracts or commitments or to incur any liabilities in the name of, or on
behalf of, the other Party, or to bind the other Party in any respect
whatsoever.
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11.18.
|
Counterparts. This
Agreement may be executed in any number of counterparts (including by
facsimile or electronic transmission), each of which need not contain the
signature of more than one Party, but all such counterparts taken together
will constitute one and the same
agreement.
|
[Signature
page follows.]
- 33
-
IN
WITNESS WHEREOF, the Parties have caused this Agreement to be executed by their
duly authorized representatives as of the date first set forth
above.
|
Landec
Corporation
|
Monsanto
Company
|
|
By:
|
/s/ Gary T. Steele
|
By:
|
/s/ Mike De Marco
|
||
|
(Signature)
|
(Signature)
|
|
Name:
|
Gary
T. Steele
|
Name:
|
Mike
De Marco
|
||
|
Title:
|
President
and Chief Executive Officer
|
Title:
|
Vice
President Strategy and Finance
|
||
|
Landec
Ag, LLC
|
||
|
By:
|
/s/ Gary T. Steele
|
|
|
(Signature)
|
||
|
Name:
|
Gary
T. Steele
|
|
|
Title:
|
President
and Chief Executive Officer
|
|