VANTAGE MOLECULAR SCIENCES, INC. 75 Hayden Avenue
July 14, 2023
Genome Dx Therapeutics Inc.
Attention: Rebecca Chiang, General Counsel
10250 Science Center Drive, Suite 600 San Diego, CA 92121
With a copy to:
Calderwood & Harkness LLP
Attention: James Prentice, Partner
555 South Hope Street, Suite 4400 Los Angeles, CA 90071
And a copy to:
Meridian Precision Diagnostics, Inc.
Attention: David Pruitt, General Counsel
2400 Meridian Parkway, Suite 300 Durham, NC 27713
And a copy to:
Whitfield Sayer & Gregg LLP
Attention: Jonathan Whitfield, Partner
200 South Tryon Street, Suite 2800 Charlotte, NC 28202
Re: Consent to Assignment of License Agreement dated September 12, 2019 (the "License Agreement") between Vantage Molecular Sciences, Inc. ("Licensor" or "Vantage") and Genome Dx Therapeutics Inc. ("Licensee" or "GDT") — Probe-Labeling Technology
Ladies and Gentlemen:
Reference is made to that certain License Agreement dated as of September 12, 2019 (the "License Agreement") by and between Vantage Molecular Sciences, Inc., a corporation duly organized and validly existing under the laws of the Commonwealth of Massachusetts ("Vantage" or "Licensor"), and Genome Dx Therapeutics Inc., a corporation duly organized and validly existing under the laws of the State of Delaware ("GDT" or "Licensee"), pursuant to which Vantage granted GDT an exclusive license to certain proprietary probe-labeling technology and related intellectual property for use in connection with GDT's OncuPath™ companion diagnostics assays, all as more particularly described in the License Agreement and identified on Exhibit A attached hereto. Capitalized terms used but not defined herein shall have the meanings ascribed to them in the License Agreement.
WHEREAS, the License Agreement contains, at Section 12.3 thereof, a provision requiring Vantage's prior written consent to any assignment, transfer, or other disposition of the License Agreement, in whole or in part, by GDT to any third party, and further providing that any purported assignment without such consent shall be null and void;
WHEREAS, GDT has notified Vantage that GDT and Meridian Precision Diagnostics, Inc. ("Meridian" or "Assignee"), a corporation duly organized and validly existing under the laws of the State of Delaware and headquartered in Research Triangle Park, North Carolina, have entered into that certain Asset Purchase Agreement dated as of May 11, 2023 (the "APA"), pursuant to which GDT will sell, assign, convey, and transfer to Meridian all assets, intellectual property, contracts, regulatory filings, data, goodwill, and related rights exclusively related to GDT's OncuPath™ companion diagnostics assay line (collectively, the "OncuPath Business"), including, without limitation, all of GDT's rights, interests, and obligations under the License Agreement;
WHEREAS, GDT has formally requested Vantage's written consent to the assignment of the License Agreement from GDT to Meridian in connection with the closing of the transactions contemplated by the APA (such assignment, the "Assignment");
WHEREAS, Vantage has reviewed the terms of the proposed Assignment and, having considered the qualifications, financial standing, and operational capabilities of Meridian as the proposed Assignee, has determined that the granting of consent to the Assignment is appropriate and consistent with the purposes and objectives of the License Agreement;
NOW, THEREFORE, in consideration of the foregoing recitals and the mutual agreements set forth herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Vantage hereby delivers this Consent to Assignment (this "Consent") on the following terms and conditions:
1. Grant of Consent
Vantage hereby consents to the Assignment of the License Agreement from GDT to Meridian, effective as of the closing date of the transactions contemplated by the APA (such date, the "Effective Date"). This Consent is being granted pursuant to Section 12.3 of the License Agreement and satisfies in full the requirement for Vantage's prior written consent to the Assignment as set forth therein.
Upon the Effective Date, Meridian shall be substituted for GDT as the "Licensee" under the License Agreement and shall be entitled to exercise all rights and enjoy all benefits of GDT as Licensee thereunder, and shall concurrently be subject to and bound by all obligations, duties, covenants, and restrictions of GDT as Licensee under the License Agreement.
This Consent is granted solely with respect to the assignment of the License Agreement to Meridian Precision Diagnostics, Inc. as described herein and in the APA and shall not be deemed or construed as (a) a consent to any further or subsequent assignment, transfer, sublicense, or other disposition of the License Agreement by Meridian or any other party, (b) a waiver of the requirement under the License Agreement for Vantage's prior written consent to any such further or subsequent assignment, transfer, sublicense, or disposition, or (c) a course of dealing or practice that would modify or limit Vantage's rights under Section 12.3 of the License Agreement with respect to any future proposed assignment. Any further or subsequent assignment of the License Agreement by Meridian or any successor or permitted assign shall require Vantage's separate prior written consent in accordance with the terms of the License Agreement.
2. Assumption of Obligations by Assignee
As a material condition of this Consent, and without limiting the generality of Section 1 above, Meridian shall, on or prior to the Effective Date, duly assume and irrevocably agree to be bound by all of the terms, conditions, obligations, restrictions, covenants, and duties of the Licensee under the License Agreement, including, without limitation:
(a) all payment obligations, including the payment of royalties, milestone payments, minimum annual royalties, and any other fees or amounts payable to Vantage as and when due under the License Agreement;
(b) all reporting obligations, including the timely delivery of royalty reports, sales reports, development progress reports, and any other reports or notices required under the License Agreement;
(c) all confidentiality and non-disclosure obligations with respect to Vantage's proprietary information and trade secrets relating to the licensed probe-labeling technology, as set forth in Article 8 of the License Agreement;
(d) all restrictions on the field of use and scope of the licensed probe-labeling technology, including the limitations on use exclusively in connection with the OncuPath™ companion diagnostics assay platform;
(e) all obligations relating to quality control, regulatory compliance, and the maintenance of records pertaining to the manufacture, testing, and commercialization of products incorporating the licensed technology;
(f) all indemnification obligations of the Licensee as set forth in Article 10 of the License Agreement; and
(g) all other obligations, duties, and restrictions applicable to the Licensee under the License Agreement.
Meridian's assumption of the License Agreement shall be documented in a duly executed Assignment and Assumption Agreement (the "Assignment and Assumption Agreement") to be entered into by GDT and Meridian and delivered to Vantage at or prior to the closing of the transactions contemplated by the APA. Vantage's receipt of a fully executed counterpart of the Assignment and Assumption Agreement is a condition precedent to the effectiveness of this Consent. In the event that the closing under the APA does not occur or the Assignment and Assumption Agreement is not executed and delivered to Vantage, this Consent shall be of no force or effect.
3. Release of Assignor
Upon the Effective Date and the valid assumption of the License Agreement by Meridian pursuant to the executed Assignment and Assumption Agreement described in Section 2, GDT shall be released and discharged from all obligations and liabilities arising under the License Agreement from and after the Effective Date, and Vantage shall look solely to Meridian as the Licensee under the License Agreement for the performance of all such obligations and the discharge of all such liabilities accruing from and after the Effective Date.
Notwithstanding the foregoing, GDT shall remain fully liable for, and shall not be released from, any and all obligations or liabilities under the License Agreement that accrued, arose, or relate to periods prior to the Effective Date, including, without limitation, (a) any unpaid royalties, fees, milestone payments, minimum annual royalties, or other amounts due and owing to Vantage for periods ending prior to the Effective Date, (b) any breach of the License Agreement by GDT occurring prior to the Effective Date, and (c) any indemnification obligations of GDT with respect to claims, losses, or damages arising from acts, omissions, or events occurring prior to the Effective Date. For the avoidance of doubt, GDT's obligation to deliver to Vantage any final royalty reports or other reports covering the period up to and including the Effective Date shall survive the Assignment and the release granted herein.
4. No Modification of License Agreement
This Consent does not constitute, and shall not be deemed or construed as, a modification, amendment, supplement, restatement, or waiver of any term, condition, covenant, restriction, right, or obligation set forth in the License Agreement. All terms and conditions of the License Agreement shall remain in full force and effect following the Assignment, without modification or alteration of any kind, except that Meridian shall be substituted for GDT as the Licensee thereunder.
From and after the Effective Date, all references in the License Agreement to "Licensee," "GDT," "Genome Dx Therapeutics Inc.," or any similar reference to the licensee party, shall be deemed to refer to Meridian Precision Diagnostics, Inc. and its permitted successors and assigns, and the License Agreement shall be read and interpreted accordingly. All notices, consents, approvals, and communications required or permitted to be given to the Licensee under the License Agreement shall, from and after the Effective Date, be directed to Meridian in accordance with Section 6 of this Consent.
Nothing in this Consent shall be deemed to enlarge, diminish, or otherwise alter the scope of the license granted under the License Agreement, the field-of-use limitations applicable thereto, or the territorial scope of the rights granted thereunder.
5. Representations of Vantage
Vantage hereby represents and warrants to each of GDT and Meridian as follows:
(a) Organization and Good Standing. Vantage is a corporation duly organized, validly existing, and in good standing under the laws of the Commonwealth of Massachusetts, and has full corporate power and authority to execute, deliver, and perform its obligations under this Consent.
(b) Authorization. The execution and delivery of this Consent and the performance by Vantage of its obligations hereunder have been duly authorized by all necessary corporate action on the part of Vantage, and no further corporate proceedings on the part of Vantage are necessary to authorize this Consent or to consummate the transactions contemplated hereby.
(c) Binding Obligation. This Consent constitutes a valid and legally binding obligation of Vantage, enforceable against Vantage in accordance with its terms, subject to applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors' rights generally, and to general principles of equity (regardless of whether enforcement is sought in a proceeding at law or in equity).
(d) License Agreement in Full Force and Effect. The License Agreement is in full force and effect as of the date hereof and has not been modified, amended, supplemented, restated, or otherwise altered, except as previously disclosed to GDT in writing prior to the date hereof. No party to the License Agreement has delivered a notice of termination with respect thereto, and no event has occurred that, with the giving of notice or the passage of time or both, would entitle any party to terminate the License Agreement.
(e) No Existing Default. To Vantage's knowledge, after reasonable inquiry, no event of default by GDT exists under the License Agreement as of the date hereof, and no event has occurred that, with the giving of notice or the lapse of time or both, would constitute an event of default by GDT under the License Agreement.
6. Notices
Following the Effective Date, the notice addresses for the parties under the License Agreement shall be as follows:
If to Vantage (Licensor):
Vantage Molecular Sciences, Inc. 75 Hayden Avenue Lexington, MA 02421
Attention: Office of the General Counsel
Telephone: (781) 402-7500
If to Licensee (Meridian, as successor Licensee):
Meridian Precision Diagnostics, Inc. 2400 Meridian Parkway, Suite 300 Durham, NC 27713
Attention: David Pruitt, General Counsel
Telephone: (919) 314-6200
With a copy (which shall not constitute notice) to:
Whitfield Sayer & Gregg LLP 200 South Tryon Street, Suite 2800 Charlotte, NC 28202
Attention: Jonathan Whitfield, Partner
Telephone: (704) 555-1800
The foregoing notice addresses shall supersede and replace the notice addresses for the "Licensee" set forth in Section 13.1 of the License Agreement. All other provisions regarding the manner and method of delivery of notices under Section 13.1 of the License Agreement shall remain in full force and effect and shall apply to notices sent to the addresses specified in this Section 6.
7. Counterparts; Electronic Execution
This Consent may be executed in two or more counterparts, each of which shall be deemed an original and all of which together shall constitute one and the same instrument. Execution and delivery of this Consent by exchange of facsimile or electronically transmitted counterparts bearing the facsimile or electronic signature of a party (including counterparts in portable document format (PDF) delivered by electronic mail) shall constitute a valid and binding execution and delivery of this Consent by such party and shall have the same force and effect as delivery of an original executed counterpart. Each party executing this Consent by facsimile or electronic transmission agrees to deliver an original executed counterpart to each other party promptly thereafter, but the failure to do so shall not affect the validity, enforceability, or binding effect of this Consent.
8. Governing Law
This Consent shall be governed by, and construed and interpreted in accordance with, the laws of the Commonwealth of Massachusetts, without regard to principles of conflicts of law that would require the application of the laws of any other jurisdiction. The parties acknowledge and agree that the choice of governing law set forth in this Section 8 is consistent with Section 13.8 of the License Agreement, which provides that the License Agreement shall be governed by the laws of the Commonwealth of Massachusetts.
[Remainder of Page Intentionally Left Blank — Signature Pages Follow]
IN WITNESS WHEREOF, the undersigned have executed and delivered this Consent to Assignment as of the date first written above.
LICENSOR:
VANTAGE MOLECULAR SCIENCES, INC.
By: ________
Name: Dr. Marcus Ellington
Title: Vice President, Business Development
Date: July 14, 2023
ACKNOWLEDGED AND AGREED as to the obligations of GDT as Assignor, including the provisions of Sections 3 and 4 hereof:
ASSIGNOR:
GENOME DX THERAPEUTICS INC.
By: ________
Name: Rebecca Chiang
Title: General Counsel
Date: July 14, 2023
ACKNOWLEDGED AND AGREED as to the assumption of obligations by Meridian as Assignee, including the provisions of Sections 1, 2, 4, and 6 hereof:
ASSIGNEE:
MERIDIAN PRECISION DIAGNOSTICS, INC.
By: ________
Name: David Pruitt
Title: General Counsel
Date: July 14, 2023
EXHIBIT A
Identification of License Agreement
cc: Rebecca Chiang, General Counsel, Genome Dx Therapeutics Inc. James Prentice, Partner, Calderwood & Harkness LLP Tiffany Rosenthal, Associate, Calderwood & Harkness LLP David Pruitt, General Counsel, Meridian Precision Diagnostics, Inc. Jonathan Whitfield, Partner, Whitfield Sayer & Gregg LLP
| Item | Detail |
| Full Title | License Agreement dated September 12, 2019 |
| Licensor | Vantage Molecular Sciences, Inc., a Massachusetts corporation, with its principal place of business at 75 Hayden Avenue, Lexington, MA 02421 |
| Licensee | Genome Dx Therapeutics Inc., a Delaware corporation, with its principal place of business at 10250 Science Center Drive, Suite 600, San Diego, CA 92121 |
| Subject Matter | Exclusive license to Vantage's proprietary probe-labeling technology and related intellectual property rights (including certain patents, patent applications, know-how, and trade secrets) for use in the development, manufacture, marketing, sale, and commercialization of the OncuPath™ companion diagnostics assay platform |
| Territory | Worldwide (as defined in Section 2.1 of the License Agreement) |
| Amendments | None |
| Side Letters or Supplements | None |