EXHIBIT 10.45
PATENT LICENSE AGREEMENT
This LICENSE AGREEMENT (the "Agreement") dated September 17, 2003 ("Effective
Date") between Xxxxxx X. Xxxxxxxx, Xx., M.D. (the "PATENT OWNER" or "LICENSOR"')
and VisiJet, Inc., a California corporation ("LICENSEE").
1. BACKGROUND
1.1 PATENT OWNER owns the U.S. patent identified in Exhibit A ("Licensed
Patent") and, except for a fifty-five percent (55%) ownership in earned
royalties derived from exploitation of the Licensed Patent to the benefit of
hereafter identified beneficiaries, is the exclusive owner of all rights to the
invention which is the subject of the patent claims therein ("xxx Xxxxxxxxx").
1.2 PATENT OWNER desires to license the Licensed Patent to the extent required
for LICENSEE to perfect commercial embodiments of the Invention and to market
the Licensed Products, as hereinafter defined, at the earliest possible time in
order that the Licensed Products therefore may be available for public use and
benefit.
1.3 LICENSEE is desirous of perfecting commercial embodiments of the Invention
and of manufacturing, producing and selling the Licensed Products and wishes to
obtain a license to use the Licensed Patents to the extent required to develop,
manufacture, use, and sell Licensed Products.
2. DEFINITIONS
2.1 "Licensed Patent" includes the U.S. Patent identified in Exhibit A hereto,
but also includes, as, applicable, any Letters Patent or international patents
issued or hereafter issued, arid pending patent applications, which is/are
directed to "the invention, and/or any divisional applications, continuation
applications, or any reissue thereof.
2.2 "Licensed Products" means any water jet device for use in the medical,
surgical and dental fields ("the Licensed Field of Use"), the manufacture, use,
or sale of which:
(a) Is covered by a valid claim of any issued, unexpired Licensed Patents. A
claim of an issued, unexpired Licensed Patent shall be deemed to be valid unless
and until it has been held to be invalid by a final judgment of a court of
competent jurisdiction from which no appeal can be or is taken; or
(b) Is covered by any claim being prosecuted in a pending application directed
to the Invention.
It is stipulated and agreed that LICENSEE's product(s) which include the recited
components described in Exhibit C hereto are covered by one of more claims of
the Licensed Patent specifically identified in Exhibit. A.
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2.3 "Net Sales" means gross sales (total monetary compensation actually received
by LICENSEE and by LICENSEE's sublicensees, as applicable, from the sale or
other disposition of Licensed Products, whether or riot assembled (and without
excluding therefrom any components or subassemblies thereof, whatever their
origin and whether or not patent impacted), discounted only by conventional
discounts, rebates and allowances.
Without limiting the foregoing, included in any Net Sales shall be, as
applicable, the monetary equivalent or the fair market value of any indirect or
non-monetary compensation in connection with the sale or disposition of Licensed
Products in the nature of offsets to existing or future indebtedness or
expenditures and/or the acquisition of non-monetary property (tangible goods,
equitable interests, etc.).
2.4 "Licensed Field of Use" means those disciplines or areas of endeavor into
and for which LICENSEE may sell Licensed Products, and includes the medical,
surgical and dental fields. However, notwithstanding the foregoing, or anything
else in this Agreement to the contrary, if, upon the expiration of 12 months
from the effective date, LICENSEE has not undertaken substantial reasonable
steps in the development for commercialization of embodiments of the licensed
invention for sale and use in the non-ophthalmic surgical or orthopedic fields,
PATENT OWNER may, upon written notice to LICENSEE, narrow the scope of the
license granted hereunder to exclude such applications and products in such
fields from the license here granted, in the event of which such licensee shall
extend only to the ophthalmic surgical field. Subject only to any subsequent,
written agreements between PATENT OWNER and LICENSEE to the contrary, such
notice shall enable PATENT OWNER himself, or through third party licensee(s), to
exploit the subject patent without further obligation to LICENSEE with respect
to products in the non-ophthalmic surgical and orthopedic fields.
Notwithstanding the foregoing, PATENT OWNER agrees to give reasonable
consideration and to negotiate in good faith with respect to any proposal by
LICENSEE pertaining to extension of rights in such fields, as well as to any
associated consulting agreement by which PATENT OWNER would provide consultation
services to LICENSEE in relation to exploitation of the Invention in therein.
Subject only to any further written agreement between PATENT OWNER and LICENSEE
to the contrary, and notwithstanding anything herein to the contrary, PATENT
OWNER retains the right to himself make and use the Invention and non-staple
components.
2.5 "Licensed Territory" means the territory set forth in Exhibit B attached
hereto.
2.6 "Exclusive" means that, subject to any provisions to the contrary in this
Agreement, PATENT OWNER shall not, during any subsisting term of this Agreement,
grant further licenses to third parties either in the Licensed Territory or in
the Licensed Field of Use. Upon expiration or termination of this Agreement, the
prohibition of this Section 2.6 shall become null and void.
3. GRANT
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3.1. PATENT OWNER hereby grants and LICENSEE hereby accepts a license under the
Licensed Patent to make, use, and sell Licensed Products for use in the Licensed
Field of Use within the Licensed Territory.
3.2 Said license is Exclusive, including the right to sublicense pursuant to
Article 13, in the Licensed Field of Use for a term commencing as of the
EFFECTIVE DATE and ending on the first to occur of the following:
(a) as to each Licensed Product, the expiration of the life of the Licensed
Patent or other patent contemplated under this Agreement directed to such
Licensed Product; or
(b) as to all Licensed Products, the termination of this Agreement for any
reason.
3.3 All rights in and to the Licensed Patents owned by the PATENT OWNER not
specifically licensed herein are exclusively reserved to the PATENT OWNER.
Without limitation to the immediately foregoing, the PATENT OWNER retains and
shall have the right to practice the Inventions and exploit rights under related
Licensed Patents in any manner not inconsistent with this Agreement, to make and
use embodiments of the Invention and of the subject matter of related Licensed
Patents for himself or in collaboration with third party academic or
not-for-profit research institutions, and to publish any information included in
the Licensed Patent. This Agreement shall not be deemed to grant any rights,
either express or implied, in such reserved rights, and no use or license to
anyone else of such reserved rights by the PATENT OWNER shall be deemed to
violate or interfere with the LICENSEE'S rights under this Agreement.
4. DILIGENCE
4.1 As an inducement to PATENT OWNER to enter into this Agreement, LICENSEE
agrees to use all reasonable efforts and diligence to proceed with the
development, manufacture, and sale or lease of. Licensed Products and to
diligently develop markets for the Licensed Product.
4.2 On or before the anniversary of the Effective Date for each year until
LICENSEE markets any Licensed Products, LICENSEE shall make a written annual
report to PATENT OWNER covering the preceding year ending June 30, regarding the
progress of LICENSEE toward commercial use of Licensed Products. Such report
shall include, at a minimum, information sufficient to enable PATENT OWNER to
ascertain progress by LICENSEE toward meeting the diligence requirements of this
Article 4.
5. ROYALTIES
5.1 In consideration of the covenants and grants of PATENT OWNER herein,
LICENSEE hereby agrees to pay certain royalties as specified hereafter. All
EARNED ROYALTY ("the Running Royalties") payments shall be made as follows:
(45%) to PATENT OWNER, (45%) to Xxxxxx X. Xxxxxx, MD ("45% ROYALTY OWNER") and,
(10%) to the Xxxxxx Xxxxxxxx and Xxxxxx Xxxxxx Family Trust ("10% ROYALTY
OWNER"), until or unless notified by PATENT OWNER to the contrary, and shall be
remitted to the following addresses:
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PATENT OWNER:
Xx. Xxxxxx X. Xxxxxxxx, Xx.
0000 Xxxxxxx Xxxx
Xxxxxx, Xxxxx 00000
45% ROYALTY OWNER:
Xx. Xxxxxx X. Xxxxxx
0000 Xxxx Xxxx Xxxxxx Xxxx
Xxxx Xxxxx, Xxxxx 00000
10% ROYALTY OWNER:
The Xxxxxx Xxxxxxxx and Xxxxxx Xxxxxx Family Trust
Xx. Xxx Xxxxxxxxxx, Trustee
Xxxxxxxxxx and Company
Xxxxx 000
000 X.X. Xxxx 000
Xxx Xxxxxxx, Xxxxx 00000
5.2 LICENSEE shall pay a non-creditable, non-refundable License Initiation
Royalty in the amount of ONE HUNDRED THOUSAND US DOLLARS ($100,000), payable in
four (4) equal installments of $25,000. The initial payment will be due on
November 1, 2003. Payments will be made subsequently at tree (3) month intervals
(February l, 2004; May l, 2004 and August l, 2004). These installment payments
are to be paid in equal shares to the PATENT OWNER and to the 45% ROYALTY OWNER.
Notwithstanding anything herein to the contrary, the License Initiation Royalty
is here deemed to be fully accrued and payable upon execution of this Agreement.
If LICENSEE fails to pay the License Initiation Royalty when due, such Royalty
shall thereafter accrue interest at the rate of ten percent (10%) per annum, or
the maximum interest rate allowed by applicable law, whichever is less. If any
portion of the License Initiation royalty remains unpaid after September 15,
2004, PATENT OWNER may, at his option, and with written notice to LICENSEE,
terminate this Agreement if LICENSEE fails to pay Royalties then due within
thirty (30) days of such written notice.
5.3 In addition, beginning on November l, 2003 and on each anniversary of the
Effective Date thereafter, until termination of the license contemplated in this
Agreement, LICENSEE shall pay a MINIMUM ANNUAL ROYALTY of TWENTY-FOUR THOUSAND
DOLLARS ($24,000). The MINIMUM ANNUAL ROYALTY shall be paid in equal shares of
(50%) each to the PATENT OWNER and to the 45% ROYALTY OWNER until the first
EARNED ROYALTY payment is made, then subsequent MINIMUM ANNUAL ROYALTY payments
are to be made as follows: 45% to PATENT OWNER, 45% to 45% ROYALTY OWNER and,
10% to the 10% ROYALTY OWNER. The minimum annual royalty payments for each year
during the term of this Agreement are non-refundable, but are creditable against
EARNED ROYALTIES (as defined herein).
5.4 In addition, LICENSEE shall pay EARNED ROYALTIES on Net Sales as follows:
sixty percent (6%) of the Net Sales for such period of time equal to the
duration of the license contemplated under this Agreement (the "Running
Royalties"). All Running Royalties shall be paid by LICENSEE on or before 45
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days after March 31st, June 30th, September 30th and December 31st of each
calendar year of the license contemplated in this Agreement, and shall be
submitted together with a statement of Running Royalties for each such
applicable period setting forth the calculation thereof.
5.5 Creditable payments under this Agreement shall be an offset to LICENSEE
against up to fifty percent (50%) of each Running Royalty payment which LICENSEE
would be required to pay pursuant to paragraph 5.3 until the entire credit is
exhausted. Any such credits shall be applied equally as against payments to
PATENT OWNER, 45% ROYALTY OWNER, and 10% ROYALTY OWNER.
5.6 Running Royalties on sales in currencies other than U.S. Dollars shall be
calculated using the appropriate foreign exchange rate for such currency quoted
by the Bank of America (San Francisco) foreign exchange desk, on the close of
business on the last banking day of each calendar quarter. All royalty payments
to PATENT OWNER shall be in U.S. Dollars. All non-U.S. taxes related to royalty
payments shall be paid by LICENSEE and are not deductible from the payments due
PATENT OWNER.
5.7 In the event of any sublicense pursuant to Article 12 herein, LICENSEE shall
pay to PATENT OWNER, the 45% ROYALTY OWNER, and the 10% ROYALTY OWNER as
provided above, sums equal to the greater of: (1) one-half of all revenues
received, or credit or debt offset realized by LICENSEE from its sublicensees in
connection with sublicensee's disposition of LICENSED PRODUCTS; or (2) that
amount which would be payable by LICENSEE under this Agreement if the sales of
LICENSED PRODUCTS by such sublicensees had instead been made by LICENSEE.
6. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
6.1 Upon execution of this Agreement, LICENSEE shall make quarterly written
reports (even if there are no sales) and Running Royalty payments, if
applicable, to PATENT OWNER on the dates set forth in Paragraph 5.3. The reports
shall be in a form of mutually agreeable to the parties and shall state the
number, description, and aggregate Net Sales of Licensed Products during such
completed calendar quarter, and resulting calculation pursuant to Paragraph 5.3
of the Running Royalty payment due PATENT OWNER for such completed calendar
quarter. The quarterly statements will identify which portion of net sales are
subject to the 50% credit of running royalties from the minimum annual royalty
payment and a balance of the 50% credit of running royalties, even if zero, is
to be included in the statement. Concurrent with the making of each such report,
LICENSEE shall include the payment due PATENT OWNER for the Running Royalty for
the calendar quarter covered by such report.
6.2 LICENSEE agrees to keep and maintain records for a period of three (3) years
showing the manufacture, sale, use, and other disposition of products sold or
otherwise disposed of under the license herein granted. Such records will
include general ledger records showing cash receipts and expenses, and records
which include production records, customers, serial numbers, and related
information in sufficient detail to enable the royalties payable hereunder by
LICENSEE to be determined. LICENSEE further agrees to permit its books and
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records to be examined by PATENT OWNER or Designee from time to time to the
extent necessary to verify the reports provided for in Paragraph 6.1. Such
examination is to be made by PATENT HOLDER or its designee, at the expense of
PATENT OWNER, except in the event that the results of the audit reveal an
under-reporting of royalties due PATENT OWNER of five percent (5%) or more, then
the audit costs shall be paid by LICENSEE.
6.3 Within thirty (30) days after receipt of a statement from PATENT OWNER,
LICENSEE shall reimburse PATENT OWNER for all costs previously incurred by
PATENT OWNER in connection with the preparation, filing and prosecution of the
patent application(s) leading to the issuance of the LICENSED PATENT, as well as
the reasonable maintenance fees and expenses for the LICENSED PATENT which have
been incurred by PATENT OWNER.
7. WARRANTIES
7.1 Standing. PATENT OWNER represents that he is a practicing physician in good
standing under the laws of the State of Texas, with all powers necessary to own
his assets and properly and to carry on his business as so owned and conducted.
7.2 Authority. PATENT OWNER represents and warrants that he has full power and
authority to execute and deliver this Agreement, to grant the license granted
herein and to perform his obligations hereunder. The 45% ROYALTY OWNER and the
10% ROYALTY OWNER are not required or entitled to participate in any way in any
licensing of patent rights herein involved, and are solely entitled to receive
royalty payments as herein provided.
7.3 Title. PATENT OWNER represents and warrants that to the best of its
knowledge, and except as otherwise expressly provided herein, he is the sole and
exclusive owner of the Licensed Patent.
7.4 Negation of Warranties. Nothing in this Agreement is or shall be construed
as:
(a) A warranty or representation by PATENT OWNER as to the validity or scope of
any Licensed Patents;
(b) A warranty or representation that anything made, used, sold, or otherwise
disposed of under any license granted or contemplated by this Agreement is or
will be free from infringement of patents, copyrights, and other rights of third
parties;
(c) An obligation to bring or prosecute actions or suits against third parties
for infringement, except to the extent and in the circumstances described in
Article 11;
(d) Granting by implication, estoppel, or otherwise any licenses or rights under
patents or other rights of PATENT OWNER or other persons other than Licensed
patents, regardless of whether such patents or other rights are dominant or
subordinate to any Licensed Patent; or
(e) An obligation to furnish any technology or technological information other
than that contained in the Licensed Patents.
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7.5 Except as expressly set forth in this Agreement, PATENT OWNER MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE LICENSED PRODUCTS WILL
NOT INFRINGE ANY PATENT COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OR ANY OTHER
EXPRESS OR IMPLIED WARRANTIES.
8. INDEMNITY AND INSURANCE
8.1 LICENSEE agrees to indemnify, hold harmless, and defend PATENT OWNER and its
respective directors, officers, employees, consultants and agents against any
and all claims for death, illness, personal injury, property damage, and
improper business practices arising out of the manufacture, use, sale, or other
disposition of Inventions, Licensed Patents, or Licensed Products LICENSEE or
sublicensees, or their customers.
8.2. PATENT OWNER shall not be liable for any indirect, special, consequential
or other damages whatsoever, whether grounded in tort (including negligence),
strict liability, contract or otherwise. PATENT OWNER shall not have any
responsibilities or liabilities whatsoever with respect to Licensed Products.
8.3 LICENSEE shall at all times comply, through insurance or self-insurance,
with all statutory workers' compensation and employers' liability requirements
covering any and all employees with; respect to activities performed under this
Agreement.
8.4 In addition to the foregoing, LICENSEE shall maintain, during the term of
this Agreement, Comprehensive General Liability Insurance, including Products
Liability Insurance, with reputable and financially secure insurance carriers to
cover the activities of LICENSEE and its sublicensees. Such insurance shall
provide minimum limits of liability of One Million Dollars ($1,000,000) and
shall include PATENT OWNER, its directors, officers, employees, consultants and
agents as additional insureds. Such insurance shall be written to cover claims
incurred, discovered, manifested, or made during or after the expiration of this
Agreement. At PATENT OWNER'S request, LICENSEE shall furnish a Certificate of
Insurance evidencing primary coverage and requiring thirty (30) days prior
written notice of cancellation or material change to PATENT OWNER. LICENSEE
shall advise PATENT OWNER, in writing, that it maintains excess liability
coverage (following form) over primary insurance for at least the minimum limits
set forth above. All such insurance of LICENSEE shall be primary coverage,
insurance of PATENT OWNER shall be excess and noncontributory.
9. MARKING
LICENSEE agrees to xxxx Licensed Products (or their containers or labels) made,
sold, or otherwise disposed of by it under the license granted in this Agreement
with the words "U.S. Patent No. 5,620,414," Prior to the issuance of additional
patents on the Inventions, LICENSEE agrees to xxxx Licensed Products (or their
containers or labels) made, sold, or otherwise disposed of by it under the
license granted in this Agreement with the words "Patent Pending," to the extent
so applicable, and following the issuance of one or more patents, with the
numbers of the Licensed Patents.
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10. COMPANY NAMES AND MARKS
LICENSEE agrees not to identify PATENT OWNER in any promotional advertising or
other promotional materials to be disseminated to the public or any portion
thereof or to use the trade names or any trademark, service xxxx, trade name, or
symbol of PATENT OWNER, or that is associated with either of them, without
PATENT OWNER'S prior written consent.
11.1. INFRINGEMENT BY OTHERS: PROTECTION OF LICENSED PATENTS
11.1 In the event that either party learns of facts which it concludes might
constitute an infringement of any of the Licensed Patents by any third party
during the term of this Agreement, the party learning of such facts shall
promptly notify the other party in writing, setting forth such facts and the
basis for its conclusion, and shall include with such notice any other
reasonably available evidence in support thereof.
11.2 LICENSEE shall have the obligation to take all appropriate action against
the infringing party and LICENSEE shall pay all costs and expenses (including
without limitation attorney's fees and costs of investigation and experts)
incurred in connection with such action. Any legal counsel engaged by LICENSEE
shall be reasonably satisfactory to PATENT OWNER. PATENT OWNER, at LICENSEE'S
expense, shall have the right to participate in, and, to the extent that it may
wish, to jointly assume the prosecution of such action with counsel reasonably
satisfactory to LICENSEE. LICENSEE shall obtain the consent of PATENT OWNER
prior to settling any such action. If LICENSEE shall fail to take all
appropriate action as specified hereunder, then PATENT OWNER shall have the
right to take such action and LICENSEE shall pay or reimburse PATENT OWNER for
all costs and expenses (including without limitation attorneys' fees and costs
of investigation and experts) incurred in connection with such action.
11.3 Any proceeds from any settlement or judgment of any infringement claim,
action, suit or proceeding brought by LICENSEE shall be allocated and/or paid
within thirty (30) days of receipt thereof as follows: (i) first to reimburse
LICENSEE (and PATENT OWNER, pari passu to the extent that it has not otherwise
been reimbursed for attorneys' fees, costs and expenses incurred in connection
with participation in the prosecution of such infringement) for attorneys' fees
and other costs and expenses reasonable incurred in connection with the
prosecution or other efforts to terminate the infringement pursuant to the terms
of this Agreement; and (ii) thereafter, the remainder shall be equally between
the parties and herein named beneficiaries as follows: 50% to LICENSEE, 22.5% TO
PATENT OWNER, 22.5% to 45% ROYALTY OWNER, and 5% to 10% ROYALTY OWNER.
11.4 Any equitable relief, including, without limitation, declaratory and
injunctive relief, whether or not obtained in conjunction with the recovery of
monetary damages, shall inure to the benefit of all parties hereto, and to the
extent that quantitative benefit shall ever become relevant, such quantitative
benefit shall be deemed to inure as follows: 50% to LICENSEE, 22.5% TO PATENT
OWNER, 22.5% TO 45% ROYALTY OWNER, and 5% to 10% ROYALTY OWNER.
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11.5 Notwithstanding any provision of this Article 11, in the event any
infringement action, suit or proceeding is brought hereunder by either party to
enforce any rights in or to the LICENSED PATENT or LICENSED PRODUCT(S), each
party, if legally necessary, shall, upon the written request of the other party,
be named, joined and participate therein as a nominal plaintiff.
12. SUBLICENSES
12.1 LICENSEE may grant sublicenses during the Exclusive period as set forth
herein and only pursuant to express written consent of PATENT OWNER, such
written consent not to be unreasonably withheld.
12.2 If LICENSEE is unable or unwilling to serve or develop a potential market
or market territory for which there are willing sublicensees, LICENSEE will, at
PATENT OWNER'S request, negotiate in good faith all necessary sublicenses
hereunder.
12.3 Any sublicenses granted by LICENSEE under this Agreement shall be subject
and subordinate to terms and conditions of this Agreement, except:
(a) Sublicense terms and conditions shall reelect that any sublicensees shall
not further sublicense; and
(b) The earned royalty rate specified in the sublicenses may be at higher rates
than the rates in this Agreement, but in no event shall sales by a sub-licensee
effect a lower net dollar royalty obligation to PATENT OWNER than if identical
sale(s) were made directly by LICENSEE under this Agreement.
Any such sublicenses also shall expressly include the provisions of Articles 6,
7, and 9 for the benefit of PATENT OWNER and provide for the transfer of all
obligations, including the payment of royalties specified in such sublicenses,
to PATENT OWNER or its designee, in the event that this Agreement is terminated.
12.4 LICENSEE agrees to provide PATENT OWNER a copy of any sublicense granted
pursuant to this Article 12.
13. TERMINATION
13.1 LICENSEE may terminate this Agreement only by giving PATENT OWNER notice,
in writing at least thirty (30) days in advance of the effective date of the
proposed termination selected by LICENSEE, of good cause for termination of the
Agreement, and PATENT OWNER fails to remedy any such cause within thirty (30)
days after such notice. For the purposes of this Section 13.1, the term "good
cause" shall mean the failure or breach of any representation or warranty made
by PATENT OWNER in Article 7 of this Agreement, with the exception that LICENSEE
shall be deemed to have waived any misrepresentation or breach of representation
or warranty of which such party had knowledge before the effective date of this
Agreement.
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In the event of such termination by LICENSEE, ownership of all patent rights, as
well as improvements made thereon by LICENSEE and PATENT OWNER, respectively,
prior to such termination and dominated by the Patent rights, together with all
technical and business data generated by LICENSEE and relating to the Product,
shall be automatically assigned to PATENT OWNER.
13.2 PATENT OWNER may terminate this Agreement if LICENSEE;
(a) Is in default in payments required hereunder, or in providing required
reports;
(b) Is in breach of any provision hereof; or
(c) Provides any false report; and, except as otherwise provided herein with
respect to a differing time period, LICENSEE fails to remedy any such default,
breach, or false report within ninety (90) days after written notice thereof by
PATENT OWNER.
13.3 Surviving any termination are:
(a) LICENSEE'S obligation to pay royalties or fees accrued or accruable;
(b) Any cause of action or claim of LICENSEE or PATENT OWNER, accrued or to
accrue, because of any breach or default by the other party, and
(c) All of LICENSEE'S covenants and agreements contained herein with respect to
confidentiality and secrecy.
14. ASSIGNMENT
This Agreement may not be assigned.
15. ARBITRATION
15.1 Any controversy arising under or related to this Agreement, and any
disputed claim by either party against the other under this Agreement excluding
any dispute relating to patent validity or infringement arising under this
Agreement, shall be settled by arbitration in accordance with the Licensing
Agreement Arbitration Rules of the American Arbitration Association.
15.2 Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by LICENSEE and PATENT OWNER within
thirty (30) days of such arbitration request. Judgment upon the award rendered
by the arbitrator shall be final and non-appealable and may be entered in any
court having jurisdiction thereof.
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15.3 The parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit in the Federal District Court of the Western
District of Texas, San Antonio Division. The Arbitrator may limit the scope,
time and/or issues involved in discovery.
15.4 Any arbitration shall be held at the place then designated by the PATENT
OWNER, unless the parties hereto mutually agree in writing to another place.
16. NOTICES
All notices under this Agreement shall be deemed to have been fully given when
done in writing and deposited in the United States mail, registered or
certified, and addressed as follows:
To PATENT OWNER:
Xxxxxx X. Xxxxxxxx, Xx., MD
0000 Xxxxxxx Xxxx
Xxxxxx, XX 00000
With a copy to:
Xxxxx X. Xxxxx, Registered Patent Attorney
Naman, Howell, Xxxxx & Xxx, PC
000 Xxxxxxxxxx Xxx.
X.X. Xxx 0000 Xxxx, Xxxxx 00000-0000
To LICENSEE:
VisiJet:, Inc.
000 Xxxxxxxxxx Xxxxx, Xxxxx X
Xxxxxx, XX 00000-0000
Attn: Xxxxxx X. Xxxxxx, President
Either party may change its address upon written notice to the other party.
17. CONSTRUCTION
17.1 This Agreement shall be governed by the laws of the United States and of
the state of Texas applicable to agreements negotiated, executed and performed
wholly within Texas.
17.2 The failure of PATENT OWNER to enforce at any time any of the provisions of
this Agreement, or any rights in respect thereto, or to exercise any election
herein provided, shall in no way be considered to be a waiver of such
provisions, rights, or elections or in any way to affect the validity of this
Agreement.
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17.3 It is mutually agreed that this Agreement contains the entire Agreement
between the parties hereto applying to the matters herein contained, and that
the same has been entered into in reliance upon only the provision contained
herein and not upon any representations by either of the parties; that this
Agreement shall supersede all representations, agreements, statements and
understandings relating to such matters made prior to execution of this
Agreement, and that this Agreement can only be amended by an Agreement in
writing executed by all of the parties hereto.
17.4 The rule of construction that an agreement shall be interpreted against the
drafting party shall not apply to this Agreement, In this Agreement, whenever
the context so requires, the masculine, feminine or neuter gender, and the
singular or plural number or tense, shall include the others.
18. RELATIONSHIP OF PARTIES
Each party shall conduct all business in such party's own name as an independent
contractor. No joint venture, partnership, employment agency or similar
arrangement is hereby created between the parties. Nether party has the right or
power to act for or on behalf of the other or to bind the other in any respect
whatsoever.
19. SEVERABILITY
If any provision of this Agreement is determined to be illegal, invalid or
otherwise unenforceable by a court of competent jurisdiction, then to the extent
necessary to make such provision and/or this Agreement legal, valid or otherwise
enforceable, such provision shall be limited, construed or severed and deleted
from this Agreement, and the remaining portion of such provision and the
remaining other provisions hereof shall survive, remain in full force and effect
and continue to be binding, and shall be interpreted to give effect to the
intention of the parties insofar as that is possible.
20. AMENDMENT AND WAIVER
Neither this Agreement nor any of its provisions may be amended, changed,
modified or waived except in a writing duly executed by the party to be bound
thereby.
21. FURTHER ASSURANCES
The parties shall execute any and all additional documents and instruments and
shall make any and all other actions necessary or desirable to carry out the
intent and purposes of this Agreement.
22. COUNTERPARTS
This Agreement may be executed in one or more counterparts, each of which shall
be deemed to be an original but all of which together shall constitute one and
the same agreement.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
PATENT OWNER
/s/ Xxxxxx X. Xxxxxxxx, Xx. M.D.
------------------------------------
Xxxxxx X. Xxxxxxxx, Xx., M.D.
VISIJET, INC.
/s/ Xxxxxx X. Xxxxxx
------------------------------------
Xxxxxx X. Xxxxxx, President
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EXHIBIT A
to
Patent License Agreement
Patents and Patent Applications
1) U.S. Patent #5,620,414 titled "Apparatus and Method for Effecting Surgical
Incision Through Use of a Fluid Jet" filed on April 8, 1994 and issued on April
15, 1997 (CIP of U.S. Serial Number 906,558, filed June 30, 1992 -- abandoned).
Note: Because the effective filing date of the application for the Licensed
Patent was before June 7, 1995, such patent has a term of 17 years, expiring on
April 15, 2014, subject to the payment of applicable maintenance fees.
EXHIBIT B
to
Patent License Agreement
Licensed Territory
1) Licensed Territory for U.S. Patent #5,620,414 "Apparatus and Method for
Effecting Surgical Incision Through Use of a Fluid Jet" shall be the entire
world.
EXHIBIT C
to
Patent License Agreement
Each water jet product intended to be built and marketed by LICENSEE includes,
but is not limited to the following components which are deemed to fall within
the scope of the claims of the Licensed Patent:
The Visijet PulsaTome(R)
14
