Confidential
Treatment Requested by Fluidigm Corporation
Exhibit 10.5A
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2020.LICI.001.C
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California Institute of
Technology
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ADDENDUM TO
SECOND AMENDED
AND RESTATED LICENSE AGREEMENT
THIS ADDENDUM TO SECOND AMENDED AND RESTATED LICENSE AGREEMENT
(this “Addendum”) dated as of March 29, 2007 (the
“Addendum Date”), is entered into between CALIFORNIA
INSTITUTE OF TECHNOLOGY (“Caltech”), having an address
at 1200 East California Boulevard, Pasadena, California 91125, and
FLUIDIGM CORPORATION (“Licensee”), having a principal
place of business at 7100 Shoreline Court, South San Francisco,
California 94080, with respect to the following facts:
A. The parties entered into the Second Amended and Restated License
Agreement (the “Agreement”) effective May 1, 2000,
with a second restatement date as of May 1, 2004. All terms
used, but not defined herein, shall have the respective meanings
set forth in the Agreement.
B. On the terms and conditions of this Addendum, the parties
desire to clarify and modify certain provisions to the
Agreement.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants set forth below, the parties agree as follows:
1. Licensed Patents and Improvements .
1.1 The Agreement is amended by deleting Exhibit A to the
Agreement and by replacing it with Exhibit A to this
Addendum.
1.2 Caltech represents that it has disclosed to Licensee all
Improvements arising prior to the Addendum Date.
1.3 The parties acknowledge that Exhibit A to this Addendum
includes (a) all Improvements disclosed by Caltech to Licensee
prior to the Addendum Date, and elected by Licensee to be included
in the scope of the license grant by Caltech to Licensee under the
Agreement, and (b) all updates on all Licensed Patents as of
the Addendum Date. Caltech confirms that Licensee has taken all
action on its part that is necessary for all subject matter
included in Exhibit A to this Addendum to be included in the
scope of the license grant by Caltech to Licensee under the
Agreement.
2. Licensee Equity Interest and Improvement Periods .
2.1 Notwithstanding anything to the contrary in Article 5 of
the Agreement, the Improvement Periods shall be those periods from
June 1, 2003 through May 31, 2004, from June 1, 2004
through May 31, 2005, from [***]
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Information has been omitted and filed
separately with the Securities and Exchange Commission.
Confidential treatment has been requested with respect to the
omitted portions.
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Confidential
Treatment Requested by Fluidigm Corporation
2.2
Notwithstanding anything to the contrary in Article 5 of the
Agreement, (a) Licensee shall issue to Caltech [***] [***]
shares of common stock of Licensee, pursuant to the terms of a
reasonable and customary stock issuance agreement, and (b) the
parties acknowledge that the issuance of such shares (in addition
to the shares issued by Licensee to Caltech prior to the Second
Restatement Date) shall be in full satisfaction of Licensee’s
obligations to issue shares or otherwise make payments to Caltech
pursuant to the Agreement.
3. Royalty Reports .
The parties acknowledge (a) that the royalty reports received
by Caltech under Section 9.2 of the Agreement prior to the
Addendum Date are presumed correct and not subject to challenge,
audit or amendment, and (b) that the format of, and the
methodology used by Licensee in preparing, the royalty reports
under Section 9.2 of the Agreement are mutually acceptable and
in compliance wi