001-33133 | 04-3158289 | |
(Commission File Number) | (IRS Employer Identification No.) | |
21 Erie Street, Cambridge, Massachusetts | 02139 | |
(Address of Principal Executive Offices) | (Zip Code) |
Name | Votes For | Votes Withheld | Broker Non-Votes | |||
Peter N. Kellogg | 21,634,067 | 26,161 | 3,157,472 | |||
Celeste Beeks Mastin | 21,570,449 | 89,779 | 3,157,472 | |||
Robert L. Van Nostrand | 21,635,581 | 24,647 | 3,157,472 |
Votes For | Votes Against | Votes Abstained | Broker Non-Votes | |||
24,704,683 | 78,822 | 34,195 | 0 |
Exhibit No. | Description | |
10.1 | Fourth Amendment dated May 17, 2016 to the License Agreement dated October 1, 1999, as previously amended, between the Company and Tepha, Inc. | |
99.1 | Press Release issued by the Company on May 18, 2016. |
METABOLIX, INC. | ||
Date: May 19, 2016 | ||
By: | /s/ Joseph H. Shaulson | |
Joseph H. Shaulson |
Exhibit No. | Description | |
10.1 | Fourth Amendment dated May 17, 2016 to the License Agreement dated October 1, 1999, as previously amended, between the Company and Tepha, Inc. | |
99.1 | Press Release issued by the Company on May 18, 2016. |
1. | In consideration of Metabolix’ assignments, grants of licenses, transfer of production strains and know-how, the amendments to the Agreement reflected in this Amendment and the performance thereof, Tepha shall pay to Metabolix upon execution of this Fourth Amendment a lump sum of $2.0 million on the Fourth Amendment Date. |
2. | Section 2.3 of the Agreement is hereby deleted and replaced with the following: |
3. | Section 2.4 of the Agreement is hereby deleted and replaced with the following: |
4. | The following new Section 2.10 is hereby added to the Agreement: |
2.10.1 | (a) “INTEGRATED P4HB STRAINS” mean the following two integrated, glucose fed P4HB production strains: |
2.10.2 | “INTEGRATED P4HB PRODUCT” means a product or part thereof that uses, practices, or is made or produced using the INTEGRATED P4HB STRAINS or derivatives, co-polymers, modifications, improvements and progeny thereof. METABOLIX hereby grants to TEPHA the worldwide, exclusive, irrevocable, transferable, royalty-free right and license, with the right to sublicense at any tier, under the patent rights set forth in Appendix 1 to this Fourth Amendment attached hereto (the “INTEGRATED P4HB STRAIN PATENT RIGHTS”) in the FIELD OF USE (a) to make, have made, use, lease, sell, offer for sale and import any INTEGRATED P4HB PRODUCTS which: (i) is covered in whole or in part by an issued, unexpired valid claim or a pending claim contained in the INTEGRATED P4HB STRAIN PATENT RIGHTS in the country in which any such product or part thereof is made, used or sold; or (ii) is manufactured by using a process which is covered in whole or in part by an issued, unexpired valid claim or a pending claim contained in the INTEGRATED P4HB STRAIN PATENT RIGHTS in the country in which such process is used; and (b) to practice in relation to INTEGRATED P4HB STRAINS and derivatives, co-polymers, modifications, improvements and progeny thereof or INTEGRATED P4HB PRODUCTS any process which is covered in whole or in part by an issued, unexpired valid claim or a pending claim contained in the INTEGRATED P4HB STRAIN PATENT RIGHTS in the country in which such process is used or in which the product or part thereof made thereby is made, used or sold. The foregoing license shall remain in effect until the expiration of the last to expire of the INTEGRATED P4HB STRAIN PATENT RIGHTS. |
2.10.3 | METABOLIX, its affiliates, successors and/or assigns shall not make any claim or institute any legal action asserting any patent rights against TEPHA or its affiliates, sublicensees, partners, customers, end users, vendors, sub-contractors, successors and/or assigns in connection with the practice of the INTEGRATED P4HB STRAIN PATENT RIGHTS and/or the making, having made, using, leasing, offering for sale, sale or importing of INTEGRATED P4HB PRODUCTS and/or the practice, use or production of the INTEGRATED P4HB STRAINS or derivatives, co-polymers, modifications, improvements and progeny thereof in the FIELD OF USE and in accordance with this Amendment. |
5. | Tepha shall provide a final royalty report in accordance with Section 5.2 of the Agreement for the period from April 1, 2016 through July 16, 2016 for NET SALES of LICENSED PRODUCTS and LICENSED PROCESSES falling solely within the MIT PATENT RIGHTS or falling both within the METABOLIX PATENT RIGHTS and the MIT PATENT RIGHTS; provided that no Running Royalties or share of sublicensing revenue or any other amounts shall be due therefor as deemed remitted as part of the lump sum payment in Section 1 of this Fourth Amendment. Sections 4.1.3, 4.1.4, 4.1.5, 5.2 and 5.4 of the Agreement are hereby deleted, and no further royalties shall be payable by or royalty reports due from Tepha under the Agreement. The parties further agree that Sections 3.2 and 3.3 of the License Agreement dated September 9, 2003 between Metabolix and Tepha (the “Metabolix-Tepha License re: Monsanto Rights”) are hereby deleted and no further royalties shall be payable by Tepha thereunder. |
6. | Section 6 of the Agreement is hereby deleted and replaced with the following: |
6.1 | Effective on the Fourth Amendment Date, Metabolix hereby assigns to Tepha the METABOLIX PATENT RIGHTS listed on Appendix 1 (“ASSIGNED METABOLIX PATENT RIGHTS”) and all rights of METABOLIX to sue for past, current and future infringements of, or other patent causes of action relating to, the ASSIGNED METABOLIX PATENT RIGHTS, including without limitation the right to license and to collect and receive any damages, royalties, injunctive relief, and/or settlements for such infringements of such ASSIGNED METABOLIX PATENT RIGHTS. Delivery shall be as follows: |
6.2 | From and after the Fourth Amendment Date, TEPHA, at its own expense and in its sole discretion, shall have the right, but not the obligation to file, prosecute and maintain such ASSIGNED METABOLIX PATENT RIGHTS at its own expense. |
6.3 | Tepha shall have no further obligation to reimburse METABOLIX for any patent expenses or fees whatsoever incurred on or after the Fourth Amendment Date, except as otherwise provided in Section 6.4. |
6.4 | If Metabolix shall elect not to file, prosecute, or maintain any METABOLIX PATENT RIGHT or INTEGRATED P4HB STRAIN PATENT RIGHT in any country, including omitting to list any countries at the time of election of countries in a PCT or other supranational filing, Metabolix shall so notify Tepha in writing at least thirty (30) days prior to any election, filing, action, payment or the like being due or any other action or inaction in that country or election that would result in loss of patent rights, abandonment, disclaimer, cancellation, admission of invalidity or unenforceability, or withdrawal of any claim of such METABOLIX PATENT RIGHT or INTEGRATED P4HB STRAIN PATENT RIGHT, in which event Tepha shall have the right, but not the obligation, to (a) elect, file, prosecute, or maintain such METABOLIX PATENT RIGHT or INTEGRATED P4HB STRAIN PATENT RIGHT in such country, or (b) require Metabolix, prior to any loss of rights, to assign such METABOLIX PATENT RIGHT or INTEGRATED P4HB STRAIN PATENT RIGHT in such country to Tepha (which patent right will then be deemed automatically added to Appendix 1 of the Fourth Amendment and included within the definition of ASSIGNED METABOLIX PATENT RIGHTS). Payment of all out-of-pocket fees and costs relating to the filing, prosecution, and maintenance of such assigned METABOLIX PATENT RIGHTS or INTEGRATED P4HB STRAIN PATENT RIGHTS shall be the responsibility of METABOLIX until after the date of Tepha’s election to take over responsibility for the filing, prosecution, and maintenance or after execution of Patent Assignment Agreements in the format of Appendix D (as applicable) and thereafter shall be the responsibility of TEPHA in its sole discretion without obligation. If Tepha elects to take over responsibility or have the INTEGRATED P4HB STRAIN PATENT RIGHTS assigned to Tepha, METABOLIX shall on or prior to the date of transfer or assignment comply with the obligations in Section 6.1(a), (b), (c), (d) and (e) as to such METABOLIX PATENT RIGHTS or INTEGRATED P4HB STRAIN PATENT RIGHTS. In the event of any assignment, change of control, merger, reorganization, sale, or other transfer of METABOLIX and/ or the METABOLIX PATENT RIGHTS or INTEGRATED P4HB STRAIN PATENT RIGHTS to a third party, Metabolix shall require the assignee, successor, purchaser or other transferee to agree to be bound by the terms of this Section 6.4 and shall provide a copy of such agreement to Tepha within thirty (30) days after such assignment, change of control, merger, reorganization, sale, or other transfer. After assignment of any METABOLIX PATENT RIGHTS or INTEGRATED P4HB STRAIN PATENT RIGHTS to TEPHA under this Section 6.4, TEPHA, its affiliates, successors and/or assigns shall not make any claim or institute any legal action asserting the METABOLIX PATENT RIGHTS or INTEGRATED P4HB STRAIN PATENT RIGHTS against METABOLIX or its affiliates, sublicensees, partners, customers, end users, vendors, sub-contractors, successors and/or assigns in connection with the practice outside the FIELD OF USE of such METABOLIX PATENT RIGHTS or INTEGRATED P4HB STRAIN PATENT RIGHTS. |
7. | Section 14.7 of the Agreement is hereby deleted. |
8. | Metabolix represents and warrants as follows: |
9. | Except as expressly amended hereby, all provisions of the Agreement and the Metabolix-Tepha License re: Monsanto Rights shall remain in full force and effect; provided however, that nothing contained herein shall be deemed to amend the Letter Agreement dated December 17, 2010 among Tepha, Metabolix and Bard Shannon Limited. All of the Appendices to this Fourth Amendment are attached hereto and incorporated herein and in the Agreement. |
10. | This Fourth Amendment may be executed in counterparts, each of which shall be deemed an original with all such counterparts together constituting one instrument. A signature transmitted via facsimile or electronic means shall be deemed to be and shall be as effective as an original signature upon confirmation of transmission. |
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