EX-10.5 3 v02620exv10w5.txt EXHIBIT 10.5 Portions of this Exhibit have been omitted pursuant to a request for confidential treatment and the non-public information has been filed with the SEC. EXHIBIT 10.5 FIRST AMENDMENT TO SETTLEMENT AGREEMENT THIS FIRST AMENDMENT TO SETTLEMENT AGREEMENT ("First Amendment"), effective as of October 1, 2003, is made by and among Applera Corporation, a Delaware corporation, acting through its Applied Biosystems Group ("AB"), Irena Bronstein, of Newton, Massachusetts ("Bronstein"), Lumigen, Inc., a Michigan corporation ("Lumigen"), A. Paul Schaap, of Grosse Point Park, Michigan ("Schaap"), Wayne State University, a not for profit constitutional body corporate organized under the laws of the State of Michigan ("WSU"), and Diagnostic Products Corporation, a California corporation, ("DPC"); WHEREAS, Bronstein, Lumigen, Schaap, and WSU, along with Tropix, Inc., a Delaware corporation ("Tropix"), entered into a Settlement Agreement made effective as of February 10, 1995 ("the Settlement Agreement"); and WHEREAS, Tropix was later acquired by and thereafter merged into AB (f/k/a The Perkin-Elmer Corporation) and currently operates through Applera's Applied Biosystems Group; and WHEREAS, DPC purchases PPD and TB Enhancer (both as defined in the Settlement Agreement) from Lumigen; and WHEREAS, AB, Bronstein, Lumigen, Schaap and WSU, wish to amend the Settlement Agreement as set forth in this First Amendment, and DPC, a guarantor of Lumigen's payments to Tropix under the Settlement Agreement, wishes to be a party to this First Amendment and to be bound by the covenants expressly set forth herein; NOW, THEREFORE, in consideration of the mutual undertakings set forth herein, the parties agree as follows: 1. Unless the context of this First Amendment indicates otherwise, capitalized terms used herein shall have the same meaning as defined in the Settlement Agreement. 2. AB covenants and agrees, on its own behalf, and on behalf of its affiliates, parent and subsidiary corporations, predecessors (specifically including Tropix), successors and assigns, not to institute any suit, action or proceeding in any court, state or federal, U.S. or foreign, or in any patent office or tribunal, against Lumigen, or DPC, or any of their suppliers, customers, licensees, affiliates, subsidiary or parent corporations, predecessors, successors or assigns, arising out of DPC's use or sale or its customers' use or sale of TB Enhancer purchased by DPC from Lumigen in conjunction with PPD purchased by DPC from Lumigen as an element of human in vitro diagnostics or veterinary diagnostics. DPC is no longer required to purchase from AB, DPC's requirements for PPD and TB Enhancer for veterinary diagnostic immunoassays. 3. DPC agrees to pay to AB within thirty (30) days after the end of each calendar quarter starting January 1, 2003 and ending upon the last to expire of the Assigned Patent Rights, as defined in the Settlement Agreement, a royalty equal to * % of DPC's sales of Kits of medical diagnostic and veterinary reagents which are used in conjunction with PPD and TB Enhancer. The term Kit shall mean and include any product or commercial test which is manufactured by or on behalf of DPC and sold or otherwise commercially exploited by or on behalf of DPC and delivered for use with PPD and TB Enhancer as an element of human in vitro diagnostics or veterinary diagnostics. A Kit normally contains active buffers, antibody/antigen/DNA/peptide, conjugate and substrate (PPD and enhancers). As a basis for determining the royalty rate set forth above, DPC has provided its applicable reagent sales during calendar years 2000, 2001, and 2002 (see Exhibit 1). 4. Lumigen's obligation under Section 5.1 of the Settlement Agreement to pay to AB a royalty equal to * percent ( * %) of Gross Revenues shall continue; provided, however, that Lumigen shall exclude Gross Revenue derived from the business of Lumigen with DPC as described in paragraph 2 above. This exclusion shall continue in effect so long as DPC shall make the payments called for in paragraph 3 above. 5. Except as modified by the provisions of this First Amendment, all terms contained in the Settlement Agreement shall continue in full force and effect. IN WITNESS WHEREOF, the parties have caused this First Amendment to be executed, corporate parties acting by and through their duly-authorized officers, all on the day and date first above written. Applera Corporation through its Applied Biosystems Group By /S/ Laura Lauman ----------------------------------- Its Vice President ----------------------------------- * Omitted pursuant to a request for confidential treatment. This material has /S/ Irena Bronstein been filed separately with the SEC. -------------------------------- Irena Bronstein Lumigen, Inc. By /S/ Gary T. Priestap ----------------------------- Its Vice President ------------------------ 2 /S/ A. Paul Schaap -------------------------------- A. Paul Schaap Wayne State University By /S/ ----------------------------- Its Vice President/General Counsel ------------------------ Diagnostic Products Corporation By /S/ Michael Ziering ----------------------------- Its President ------------------------ 3 EXHIBIT 1 Lumigen Revenue with Diagnostic Products Corporation November 7, 2002
Total Lumigen *% Royalty DPC *% Royalty Revenue paid to Tropix Reagent as a % of DPC Year with DPC from DPC business Sales Reagent Sales - ---- -------- ----------------- ----- ------------- 2000 * * 89,910,027 *% 2001 * * 117,772,135 *% 2002 (est) * * 144,734,132 *% 2003 (projection) * * 161,525,000 *% 4 year total * 513,941,294 *%
* Omitted pursuant to a request for confidential treatment. This material has been filed separately with the SEC CERTAIN DEFINITIONS USED IN FIRST AMENDMENT TO SETTLEMENT AGREEMENT "PPD" shall mean 4-methoxy-4-(3-phosphatephenyl)spiro[1,2-dioxetane-3, 2-adamantane]disodium salt. "TB Enhancer" shall mean polyvinylbenzyltributylphosphonium chloride. "Assigned Patent Rights" shall mean the patents and patent applications identified on Exhibit A attached hereto and any patents issuing from any such patent applications, and any continuations, divisions, substitutions, reissues, extensions and renewals of any of the foregoing. EXHIBIT A ASSIGNED PATENT RIGHTS U.S. PATENTS 4,962,192 4,959,182 5,004,565 5,386,017 U.S. APPLICATIONS 06/887,139 07/023,649 07/265,890 07/677,097 08/020,302 08/021,022 08/186,461 08/262,564 08/339,085 FOREIGN PATENTS
Country Patent No. ------- ---------- Australia 603,736 Korea 69,259 Taiwan 46,563
FOREIGN PATENT APPLICATIONS
Country Filing Date Serial No. ------- ----------- ---------- Canada 5/13/87 537,003-5 Canada 9/21/93 616,729-2 Canada 5/31/89 601,376-7 Canada 12/20/89 2,006,222 Japan 6/11/91 236,758/91 Japan 6/11/91 236,759/91 Japan 7/24/89 191,247/89 Japan 6/29/93 187,042/93 Japan 12/21/89 502,424/89 *EPO 6/23/87 87108978.5 *EPO 11/25/93 93119049.0 *EPO 7/24/89 92109406.6 *EPO 8/21/92 92114339.2 *EPO 7/24/89 89113627.7 *EPO 12/21/89 89123690/3 China 7/27/89 89106249.1 China 7/27/89 93120975.7 India 9/6/89 454/MAS/89 India 7/6/93 457/MAS/93
* Includes (1) any national applications filed on the basis of this application, (2) all rights to file any national application in any state designated in this application, and (3) all national and European patents issued and to issue based on this application.
