EXHIBIT 10.1
SETTLEMENT AGREEMENT
AGREEMENT, dated as of October 17, 2003 (the
"Agreement"), among COMPETITIVE TECHNOLOGIES, INC., a Delaware
corporation formerly known as University Patents, Inc. ("CTI"),
UNILENS CORP. USA, a Delaware corporation ("Unilens USA"), and
UNILENS VISION INC., a British Columbia corporation formerly
known as Unilens Optical Corp. ("Unilens Vision" and, together
with Unilens USA, the "Unilens Companies").
W I T N E S S E T H:
WHEREAS, the parties and University Optical Products
Co. are parties to an Asset Purchase Agreement, dated January
23,1989 (the "Asset Purchase Agreement") and the parties are
parties to a Settlement and Forbearance Agreement, dated July 15,
1993 (as amended by the Amendment and Modification Agreement
dated September 27, 1993, the "1993 Agreement");
WHEREAS, there have been disputes among the parties
with respect to the Asset Purchase Agreement and the 1993
Agreement (together, the "Prior Agreements");
WHEREAS, on or about August 22, 2003, CTI commenced an
action against the Unilens Companies in the United States
District Court for the Middle District of Florida entitled
Competitive Technologies, Inc. v. Unilens Vision, Inc. and
Unilens Corp., Index No. 8:03 CV 1783-T23EAJ;
WHEREAS, CTI withdrew such federal court action on or
about September 3, 2003 and, on or about September 4, 2003, filed
an action in the Circuit Court of the 13th Judicial District
(Hillsborough County), Florida Civil Division (the "Court"), with
the same title, Case No. 03-8216 (the "Action"); and
WHEREAS, the parties now wish to settle and dispose of
all claims and disputes among them, provide for the dismissal
with prejudice of the Action and set forth their complete
understanding of their remaining respective rights and
obligations;
NOW, THEREFORE, in consideration of the mutual promises
and releases set forth below, the parties agree as follows:
1. Settlement of Claims and Dismissal of the Action.
(a) In consideration of the payments being made and to be made
by the Unilens Companies pursuant to Section 3 and the other
agreements set forth in this Agreement, as of the Effective Date
(as defined in Section 3(a)(i)), CTI shall dismiss with prejudice
the Action and settle all Claims (as defined in Section 5)
against the Unilens Companies other than any that may arise under
this Agreement. It is agreed that as used in this Agreement,
"Claims" shall be construed as broadly as possible and shall
include, without limitation, all Claims based on conduct prior to
the Effective Date that have, or could have been, asserted in the
Action and all Claims arising from, or relating in any way to,
the Prior Agreements.
(b) Promptly following the Effective Date, CTI shall arrange for
dismissal of the Action by the filing with the Court a Notice of
Voluntary Dismissal with prejudice and without costs to any party
(the "Stipulation") and do whatever additional things that may be
necessary to effect promptly such dismissal and discontinuance of
the Action. The parties shall cooperate and direct their
attorneys to prepare such documents and take such actions as may
be necessary to achieve such dismissal promptly. The failure by
CTI to cause the filing of the Stipulation with the Court shall
not affect the releases provided for in this Agreement or prevent
the Unilens Companies from unilaterally submitting this Agreement
as a basis for moving the Court to dismiss the Action.
2. Termination of the Prior Agreements. As of the Effective
Date, each Prior Agreement shall be irrevocably terminated and
canceled in its entirety and no party shall have any further
obligation or liability under either Prior Agreement.
3. Payments.
(a) The Unilens Companies shall make payments to CTI in the
aggregate amount of US$1,250,000.00 (subject to certain
adjustments as provided in this Agreement) as follows:
(i) On the date that this Agreement is executed by each of the
Unilens Companies, they shall pay US$100,000.00 to CTI by wire
transfer of US dollars in good federal funds to the account
specified in Section 3(f) (the "First Payment"). The date that
the First Payment is received and retained by CTI is referred to
as the "Effective Date"; and
(ii) Until an aggregate of US$1,150,000.00 has been paid as
provided in this Section 3(a)(ii) without default, on March 31,
June 30, September 30 and December 31 of each year, beginning
December 31, 2003, the Unilens Companies shall pay to CTI by wire
transfer of US dollars in good federal funds to the account
designated in or pursuant to Section 3(f), installment payments
in amounts that are each the greater of (i) US$100,000.00 or (ii)
an amount equal to 50% of the royalties received by Unilens USA
from Bausch & Lomb Incorporated during the three calendar months
ending on the relevant date of payment, pursuant to the License
Agreement, dated October 25, 0000, xxxxxxx Xxxxxxx XXX and Bausch
& Lomb Incorporated (the "License Agreement").
(b) If any installment payment required to be made pursuant to
Section 3(a)(ii) is not made to CTI on or before the second
business day after the date it is due, time being of the essence,
such installment shall accrue interest at the rate of 8% per
annum from the original due date for such installment payment
until paid in full and all such accrued interest shall be paid to
CTI together with such installment.
(c) If any installment payment required to be made pursuant to
Section 3(a)(ii) is not made to CTI on or before the second
business day after the date it is due, and is not paid in full
(together with all interest payable thereon pursuant to Section
3(b)) to CTI within 45 days following the date of CTI's written
notice of default to the Unilens Companies with respect thereto,
then the Default Amount (as defined below) shall immediately
become due and payable by the Unilens Companies to CTI without
further notice or demand by CTI. Further, if any two consecutive
installment payments required to be made pursuant to Section
3(a)(ii) are not made on or before the second business day after
the date they are due, time being of the essence, then the
Default Amount (as defined below) shall immediately become due
and payable by the Unilens Companies to CTI without further
notice or demand by CTI. In either such event, the Default
Amount shall accrue interest at the rate of 8% per annum until
paid in full and all such accrued interest shall be paid to CTI
together with the Default Amount. For purposes of this
Agreement, "Default Amount" means an amount equal to
US$1,150,000.00, less all amounts paid by the Unilens Companies
to CTI pursuant to Section 3(a)(ii) (and excluding any interest
amounts paid to CTI pursuant to Section 3(b)) prior to the date
of CTI's notice of default.
(d) The Unilens Companies shall furnish to CTI, together with
each installment payment made pursuant to Section 3(a)(ii), a
certification by Unilens USA's Chief Financial Officer setting
forth the total amount of royalties received by Unilens USA under
the License Agreement during the three calendar months ending on
the relevant date of payment and the calculation of the
accompanying payment being made to CTI. The Unilens Companies
shall concurrently furnish to CTI a copy of the related royalty
report received from Bausch & Lomb Incorporated under the License
Agreement.
(e) The Unilens Companies shall have the right, at their option
and at any time, to prepay all or any portion of their obligation
to CTI under Section 3(a)(ii), without penalty or premium.
(f) All wire transfers made to CTI pursuant to this Section 3
shall be made in accordance with the following wire transfer
instructions (unless and until CTI notifies the Unilens Companies
in writing of different wire instructions, and then in accordance
with such new instructions):
Bank: Fleet Bank
Bank Address: Xxx Xxxxxxxx Xxxxxx, Xxxxxxxx,Xxxxxxxxxxx 00000
ABA Number: 000000000
For further credit to: Competitive Technologies, Inc.
Account Number: 93698 11621
4. Security.
(a) To secure the full performance of all of the obligations of
the Unilens Companies under this Agreement, including, without
limitation, the payment to CTI of the amounts specified in
Section 3 of this Agreement, the Unilens Companies grant, convey,
assign and transfer to CTI a lien on, and security interest in,
all of the Collateral (as defined below). As used in this
Agreement, the term "Collateral" means all of the real property
and all of the personal property and other goods of the Unilens
Companies, or either of them, wherever located, whether now owned
or existing or hereafter acquired or arising, including without
limitation all of the Unilens Companies' (or either company's)
now owned or existing or hereafter acquired or arising (i)
accounts receivable, (ii) chattel paper, (iii) contracts, (iv)
deposit accounts, (v) documents, (vi) equipment, (vii) fixtures,
(viii) general intangibles, (ix) instruments, (x) inventory, (xi)
investment property, (xii) letter-of-credit rights, (xiii)
supporting obligations, (xiv) money, (xv) patents, (xvi) licenses
or license agreements, (xvii) additions, accessions and
attachments to any of the foregoing and (xviii) renewals,
substitutions, replacements, rental payments, products and
proceeds of any of the foregoing.
(b) Upon CTI's request, the Unilens Companies shall execute,
acknowledge, deliver and/or cause to be filed all such additional
and further documents, agreements and instruments, and shall take
such other actions as may be reasonably necessary or appropriate,
to better assure, preserve, protect and perfect the security
interest granted to CTI hereunder and the rights and remedies
created hereby, including, without limitation (i) executing and
delivering to CTI a separate security agreement in a form that is
satisfactory to CTI, (ii) delivering and, where appropriate,
filing financing statements and continuation statements under the
Uniform Commercial Code (the "UCC"), (iii) obtaining governmental
and other third party consents and approvals, (iv) obtaining
waivers and consents from mortgagees, warehousemen, landlords,
lessees and licensees and (v) joining with CTI in notifying any
person that is in possession of any Collateral of CTI's security
interest therein and obtaining an acknowledgement from such
person that it is holding such Collateral for the benefit of CTI.
To the extent permitted by applicable law, until such time as the
amounts due to CTI as set forth in Section 3 are paid in full,
the Unilens Companies authorize CTI to execute and/or file
financing or continuation statements as required under the UCC or
filings with the United States Patent and Trademark Office or
United States Copyright Office (or any successor officer or any
similar office in any other country), in each case without the
Unilens Companies' signature appearing thereon, for the purpose
of perfecting, confirming, continuing, enforcing or protecting
CTI's security interest granted hereunder. The Unilens Companies
agree that a carbon, photographic, photostatic or other
reproduction of this Agreement or of a financing statement is
sufficient as a financing statement.
(c) The Unilens Companies represent and warrant that the lien
and security interest granted to CTI as provided in this
Agreement is valid and enforceable and is subordinate only to the
security interest granted by the Unilens Companies in favor of
UNIINVEST Holding AG (formerly known as EBC Zurich AG) which
secures an existing debt owed by the Unilens Companies to
UNIINVEST Holding AG in the amount of US$450,000.00, plus
interest. CTI agrees that the security interest granted to CTI
hereunder is subordinate to that of UNIINVEST Holding AG
described above. On or prior to the Effective Date, the Unilens
Companies shall deliver to CTI true and complete copies of the
documents evidencing the debt owed by the Unilens Companies to
UNIINVEST Holding AG and the security interest securing such
debt, as well as a certification by Unilens USA's Chief Financial
Officer setting forth the current amount of the debt owed to
UNIINVEST Holding AG. From and after the Effective Date the
Unilens Companies shall not, without the prior written consent of
CTI, (i) grant or agree to any lien or security interest in favor
of any person or entity other than CTI and the existing lien and
security interest in favor or UNIINVEST Holding AG, except in
connection with the entry by either of the Unilens Companies into
equipment leases having an aggregate value of not more than
US$25,000.00 per year, or (ii) permit the debt (including both
principal and interest) owed by the Unilens Companies to
UNIINVEST Holding AG to exceed in total US$500,000.00.
(d) Following payment in full of all of the obligations of the
Unilens Companies under Sections 3 and 11, CTI, on request of the
Unilens Companies, shall execute and deliver to the Unilens
Companies such termination statements or other instruments in
proper form under the UCC, the rules and regulations of the
United States Patent and Trademark Office and United States
Copyright Office and any relevant laws of the Province of British
Columbia as are necessary or desirable to evidence the
termination of the security interest and lien created pursuant to
this Section 4.
5. Release of Unilens Companies. Effective on the Effective
Date, CTI, on behalf of itself and its subsidiaries, shareholders
and affiliates and its and their successors and assigns and any
other parties who may purport to claim through them (together,
the "CTI Releasors"), releases and forever discharges, Unilens
USA, Unilens Vision and their respective officers, directors,
employees, agents, shareholders, affiliates and attorneys, and
their respective successors and assigns (together, the "Unilens
Releasees"), from any and all actions, causes of action,
proceedings, suits, debts, dues, sums of money, accounts,
covenants, controversies, agreements, promises, damages,
judgments, executions, costs, claims, liabilities and demands of
any nature whatsoever (together, "Claims"), in law or equity,
which the CTI Releasors ever had, now have or hereafter can,
shall or may have against the Unilens Releasees for, by reason
of, arising out of, or in connection with, any matter, cause or
thing whatsoever from the beginning of the world to the date of
this Agreement, including, without limitation, the Prior
Agreements; provided, however, that the foregoing release shall
not apply to the respective obligations of the Unilens Companies
under this Agreement.
6. Release of CTI. Effective on the Effective Date, each of
Unilens USA and Unilens Vision, on behalf of itself and its
subsidiaries, shareholders and affiliates and its and their
successors and assigns and any other parties who may purport to
claim through them (together, the "Unilens Releasors"), releases
and forever discharges, CTI and its officers, directors,
employees, agents, shareholders, affiliates and attorneys, and
their respective successors and assigns (together, the "CTI
Releasees"), from any and all Claims, in law or equity, which the
Unilens Releasors ever had, now have or hereafter can, shall or
may have against the CTI Releasees for, by reason of, arising out
of, or in connection with, any matter, cause or thing whatsoever
from the beginning of the world to the date of this Agreement,
including, without limitation, the Prior Agreements; provided,
however, that the foregoing release shall not apply to CTI's
obligations under this Agreement.
7. Scope of Releases. The releases set forth in Sections 5 and
6 extend to all Claims based on conduct that occurred prior to
the Effective Date, whether now known or unknown, existing or non-
existing, mature or unmatured, asserted or unasserted. The
effect of such releases is without territorial limitation and
applies in all jurisdictions. Following the Effective Date, none
of the parties shall institute or prosecute any action or
proceeding based on any Claim released in Sections 5 or 6.
Nothing in this Agreement shall be construed as an admission of
any liability by either party. Further, nothing in this
Agreement shall act as a discharge or release of any claim that
may arise with respect to the provisions of this Agreement or
shall prevent any party from commencing any action or proceeding
to enforce any such provision.
8. Intentions of the Parties. It is the intention of the
parties that this Agreement be a full and final accord and
satisfaction and mutual, general release of any Claims that any
of the CTI Releasors or the Unilens Releasors have against any of
the Unilens Releasees or the CTI Releasees, respectively. In
order to implement a full release of all Claims, each party
acknowledges that this Agreement is intended to include in its
effect any Claim which it does not know or suspect to exist in
its favor that are based on conduct that occurred prior to the
Effective Date, that this Agreement contemplates the
extinguishing of any such Claim and that the provisions of
Sections 5 and 6 shall remain in effect as full releases
notwithstanding any discovery of any additional or different
facts.
9. Confidentiality. The parties agree that the content and
existence of this Agreement and all information and
communications pertaining thereto, shall be held in strict
confidence; except (i) as may be required to be disclosed by any
party pursuant to applicable securities laws or the rules and
regulations of any stock exchange, (ii) as may be required by the
parties' respective institutional lenders, auditors, financial
consultants and insurance carriers, (iii) as may be disclosed to
a party's counsel for purposes of seeking legal advice; (iv) as
may be appropriate by a party to enforce its rights under this
Agreement or (v) as required by subpoena or an order of a court,
tribunal or governmental authority of competent jurisdiction;
provided, however, that at least five days prior to any such
disclosure pursuant to this clause (v) of this Section 9, the
party of whom information is requested notifies the others in
writing, of the specific information, if any, that it proposes to
disclose in order to afford the other parties an opportunity to
challenge the disclosure requirement or seek an appropriate
protective order.
10. Representations and Warranties. Each party represents and
warrants to the others that (a) it owns all right, title and
interest in and to all Claims released by it hereunder and has
not assigned any such Claim or any interest therein to any other
party, (b) no third party is currently claiming or threatening to
claim any right, title or interest in or to any of the Claims
released by it hereunder (including in the case of CTI, Optical
Associates, Limited Partnership), (c) it has full power and
authority, and has taken all corporate action necessary to
authorize it, to enter into, and perform its obligations under,
this Agreement and (d) it has received independent legal advice
from its attorneys with respect to the advisability of making the
settlement, release and waivers provided in this Agreement. Each
party shall indemnify, defend and hold harmless the others from
any loss or liability arising from any breach of any of its
representations or warranties set forth in this Section 10.
11. Payment of Costs. If the Unilens Companies, or either of
them, breach any of their obligations under this Agreement,
including, without limitation, any of their payment obligations
set forth in Section 3, CTI shall be entitled to recover from the
Unilens Companies any costs and expenses, including reasonable
attorneys' fees, that CTI incurs in connection with any legal
proceedings or other action that CTI takes to enforce its rights
under this Agreement.
12. Miscellaneous.
(a) Entire Agreement. This Agreement sets forth the entire
understanding of the parties with respect to its subject matter,
merges and supersedes any prior or contemporaneous understandings
with respect to its subject matter, and shall not be modified or
terminated except by a written instrument executed by CTI and
each of the Unilens Companies. Failure of any party to enforce
any provision of this Agreement shall not be construed as a
waiver of its rights under such or any other provision.
(b) Successors and Assigns. This Agreement shall be binding on,
enforceable against and inure to the benefit of the parties and
their respective successors and permitted assigns, and nothing
herein is intended to confer any right, remedy or benefit on any
other person. No party may assign its rights or delegate its
obligations hereunder without the written consent of the others.
(c) Expenses. Each of the parties shall bear and pay, without
any right of reimbursement from any other party, all costs,
expenses and fees incurred by it or on its behalf incident to the
preparation, execution and delivery of this Agreement and the
performance of such party's obligations hereunder, including,
without limitation, the fees and disbursements of attorneys
retained by such party in connection with the transactions
contemplated in this Agreement, and shall indemnify and hold
harmless the other parties from and against all such fees, costs
and expenses; provided, however, that nothing herein shall in any
way effect CTI's rights under Section 11.
(d) Communications. All notices and other communications given
under this Agreement shall be in writing and shall be deemed to
have been duly given (a) when delivered by hand or by Fedex or a
similar overnight courier to, (b) five days after being deposited
in any United States post office enclosed in a postage prepaid
registered or certified envelope addressed to, or (c) when
successfully transmitted by fax (with a confirming copy of such
communication to be sent as provided in (a) or (b) above) to, the
party for whom intended, at the address or fax number for such
party set forth below, or to such other address or fax number as
may be furnished by such party by notice in the manner provided
herein; provided, however, that any notice of change of address
or fax number shall be effective only upon receipt.
If to CTI: If to either Unilens Company:
Competitive Technologies, Inc. Unilens Corp. USA.
0000 Xxxxxxx Xxxx 00000 00xx Xxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxxxxx 00000 Xxxxx, Xxxxxxx 00000
Attention: President Attention: Xx. Xxxxxx X. Xxxxxx
Fax No.: (000) 000-0000 Fax No.: (000) 000-0000
with a copy to: with a copy to:
Xxxxx X. Xxxxx, Esq. Salans
Xxxxx and Wolf, P.C. 000 Xxxxx Xxxxxx
0000 Xxxxx Xxxxxx Xxx Xxxx, Xxx Xxxx 00000
Xxxxxxxxxx, Xxxxxxxxxxx 00000 Attention: Xxxxxxxx X. Xxxxxxxxx, Esq.
Fax No.: (000) 000-0000 Fax No.: (000) 000-0000
(e) Governing Law. This Agreement shall in all respects be
governed by and construed and enforced in accordance with the
laws of the State of Connecticut applicable to agreements made
and fully to be performed in such state, without giving effect to
conflicts of law principles.
(f) Jurisdiction and Venue. The parties agree that any legal
action or proceeding concerning this Agreement or its enforcement
shall only be brought in the Federal or State courts in
Connecticut, and accordingly, the parties consent to the
jurisdiction and exclusive venue of such courts with respect to
any legal action or proceeding concerning this Agreement or its
enforcement.
(g) Savings Clause. If any provision of this Agreement is held
to be invalid or unenforceable by any court or tribunal of
competent jurisdiction, the remainder of this Agreement shall not
be affected thereby, and such provision shall be carried out as
nearly as possible according to its original terms and intent to
eliminate such invalidity or unenforceability, the parties
intending that any otherwise invalid provision of this Agreement
may be judicially reformed so as to be carried out as nearly as
possible according to its original terms.
(h) Counterparts. This Agreement may be executed in multiple
counterparts, each of which shall be deemed an original, but all
of which together shall constitute one and the same instrument.
Signatures transmitted by facsimile shall have the same force and
effect as original signatures.
(i) Construction. Headings contained in this Agreement are for
convenience only and shall not be used in the interpretation of
this Agreement. References herein to Sections are to the
sections of this Agreement. As used herein, the singular
includes the plural, and the masculine, feminine and neuter
gender each includes the others where the context so indicates.
IN WITNESS WHEREOF, each of the parties has executed
this Agreement as of the date first set forth above.
COMPETITIVE TECHNOLOGIES, INC. UNILENS CORP USA.
By /s/ Xxxx Nano By /s/ Xxxxxx X. Xxxxxx
Xxxx Nano, President Xxxxxx X. Xxxxxx, President
UNILENS VISION, INC.
By /s/ Xxxxxx X. Xxxxxx
Xxxxxx X. Xxxxxx, President
ACKNOWLEDGEMENTS
STATE OF CONNECTICUT )
) ss.:
COUNTY OF FAIRFIELD )
The foregoing instrument was acknowledged before me
this 17th day of October 2003, by Xxxx Nano, President of
Competitive Technologies, Inc., a Delaware corporation, on behalf
of the corporation. Xxxx Nano is _____ personally known to me or
has _____produced _________________________ as identification.
/s/ Xxxxxxxx Xxxxxxxxxxx
Notary Public
STATE OF FLORIDA )
) ss.:
COUNTY OF PALM BEACH)
The foregoing instrument was acknowledged before me
this 17th day of October 2003, by Xxxxxx X. Xxxxxx, President of
Unilens Corp. USA, a Delaware corporation, on behalf of the
corporation. Xxxxxx X. Xxxxxx is _____ personally known to me or
has _____produced Florida Drivers License as identification.
/s/ April Xxxx Xxxxxxxxxx
Notary Public
STATE OF FLORIDA )
) ss.:
COUNTY OF PALM BEACH)
The foregoing instrument was acknowledged before me
this 17th day of October 2003, by Xxxxxx X. Xxxxxx, President of
Unilens Vision, Inc., a British Columbia corporation, on behalf
of the corporation. Xxxxxx X. Xxxxxx is _____ personally known
to me or has _____produced Florida Drivers License as
identification.
/s/ April Xxxx Xxxxxxxxxx
Notary Public
