Exhibit 10.1
ASSIGNMENT/ASSUMPTION AGREEMENT
This Agreement is entered into this 23rd day of April, 2001, by and between
Developed Technology Resource, Inc., a Minnesota corporation ("DTR") and DTR-Med
Pharma Corp., a Nevada corporation.
Recitals
A. DTR-Med Pharma Corp. is a wholly owned subsidiary of DTR.
B. DTR is a party to an agreement entitled "Agreement for Transfer of
Patent and Proprietary Rights" dated September 5, 1995, and an amendment to that
agreement dated August 29, 1996, which are together referred to herein as the
"Transfer Agreement," a copy of which is attached as Exhibit A.
C. The Transfer Agreement transfers certain medically related patents and
technology identified therein (the "Technology") from Medical Biophysics
International, a Minnesota partnership (referred to as "MBI"), to Artann
Corporation, a New Jersey corporation.
D. DTR was a 50% partner in MBI, and Xxxxx X. Xxxxxxxxx ("Xxxxxxxxx"), a
resident of New Jersey, was a 50% partner of MBI.
E. Artann Corporation is owned and controlled by Xxxxxxxxx.
F. The Technology was subsequently assigned by Artann Corporation to ArMed,
L.L.C., an Alabama limited liability company which was succeeded by ArMed,
L.L.C., a Delaware limited liability company, which was, in turn, succeeded by
ArMed, Inc., a Delaware corporation.
G. Under the Transfer Agreement, DTR is entitled to receive payments (the
"Percentage Based Payments") from Artann Corporation based upon the gross
revenues received by Artann Corporation from (i) the manufacture and sale of
home use breast cancer detection systems, utilizing the Technology, (ii) the
licensing or assignment to third parties of the rights to manufacture and sell
breast cancer detection systems, utilizing the Technology, and (iii)
distributions made by ArMed, Inc. The Transfer Agreement and a separate Security
Agreement dated June 15, 1997, a copy of which is attached as Exhibit B (the
"Security Agreement"), grants to DTR a security interest in units (or membership
interests) of ArMed, L.L.C., an Alabama limited liability company, owned by
Xxxxxxxxx and Artann Corporation, as collateral for payment Percentage Based
Payments.
H. DTR is desirous of transferring, and DTR-Med Pharma Corp. is desirous of
receiving, the interests of DTR in the Transfer Agreement and Security
Agreement, in consideration of the issuance by DTR-Med Pharma Corp. of 1,221,890
shares of its $0.001 par value common stock.
Agreement
Now, therefore, in consideration of the recitals and the mutual covenants
contained herein, the parties hereto agree as follows:
1. Assignment by DTR. DTR assigns and transfers to DTR-Med Pharma Corp.,
all of its rights and interests under the Transfer Agreement and the Security
Agreement.
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2. Assumption of Obligations. DTR-Med Pharma Corp. accepts the assignment
and transfer, and assumes and agrees to satisfy DTR's obligations under the
Transfer Agreement in accordance with the terms thereof.
3. Acknowledgment of Receipt of Certificates. DTR-Med Pharma Corp.
acknowledges that it has not received certificates representing the interests of
Xxxxxxxxx or Artann Corporation in ArMed, Inc., to be held as collateral under
the terms of a security interest granted to DTR under the Transfer Agreement and
the Security Agreement to secure the payment of the Percentage Based Payments as
provided thereunder.
4. Representation of DTR. Except to the extent that the assets of ArMed LLC
(the Alabama limited liability company) were assigned to ArMed LLC (the Delaware
limited liability company) which were in turn assigned to ArMed, Inc., a
Delaware corporation, without proper documentation of the security interests of
DTR by Artann Corporation and Xxxxxxxxx, to insure that DTR has a perfected
security interest in ArMed, Inc.'s capital stock held by Artann Corporation and
Xxxxxxxxx, to the knowledge of DTR, neither Artann Corporation or Xxxxxxxxx are
in default of the terms of the Transfer Agreement.
5. Limitation of Warranties and Representations. DTR's assignment and
transfer hereunder is without warranty or representation, except as expressly
provided herein. Specifically, but not with the intention of limiting the
foregoing statement, DTR does not warrant the enforceability of the Transfer
Agreement or any provision thereof, the future performance of the parties to the
Transfer Agreement, or the perfection of the security interest in the ArMed,
Inc. interest held by Xxxxxxxxx or Artann Corporation.
6. Indemnification/Hold Harmless. DTR-Med Pharma Corp. will indemnify and
hold harmless DTR from all causes of action, proceedings, liabilities, cost and
expenses (including reasonable attorneys fees) suffered or incurred by DTR under
and as a result of the Transfer Agreement, and the assignment thereof under this
Agreement, except where such causes of action or proceedings were initiated, or
such liabilities, costs, and expenses were incurred, prior to the date of this
Agreement.
In Witness Whereof, the parties hereto execute this Agreement as of the
date first above written.
Developed Technology Resource, Inc. DTR-Med Pharma Corp.
By: /s/ Xxxx Xxxx By: /s/ Xxxx Xxxx
--------------------------- --------------------------------
Xxxx Xxxx, Vice President Xxxx Xxxx, President
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EXHIBIT A
Agreement for Transfer of Patent and Proprietary Rights
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AGREEMENT FOR TRANSFER OF PATENT AND PROPRIETARY RIGHTS
This Agreement for Assignment of Patent and Proprietary Rights (the
"Agreement") is entered into effective as of the September 5, 1995, by and among
Medical Biophysics International, a Minnesota partnership ("MBI"), with
principal offices at 00000 Xxxxxxxxxx Xxxxx, Xxxxxxxxxx, Xxxxxxxxx 00000;
Developed Technology Resource, Inc., a Minnesota corporation ("DTR"), with
principal offices at 00000 Xxxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxxx, Xxxxxxxxx
00000; Xxxxx X. Xxxxxxxxx, whose business address is 000 Xxxxxxxxxx Xxxx, Xxxx
Xxxxxxxxx, Xxx Xxxxxx 00000 ("Xxxxxxxxx"); and Artann Corporation dba Artann
Laboratories, a New Jersey corporation ("Artann"), with principal offices at 000
Xxxxxxxxxx Xxxx, Xxxx Xxxxxxxxx, Xxx Xxxxxx 00000 ("Artann").
RECITALS
A. DTR and Xxxxxxxxx are the only partners of MBI and each holds a 50%
partnership interest in MBI;
X. Xxxxxxxxx and his spouse own more than 51% of the capital stock of Artann
and maintain voting control over Artann;
X. Xxxxxxxxx and the other inventors of the MBI Technology have previously
assigned all right, title and interest in the MBI Technology to MBI; and
D. MBI desires to assign the MBI Technology to Artann, and DTR and Xxxxxxxxx
are willing to consent to such assignment pursuant to the terms of this
Agreement.
AGREEMENT
In consideration of the foregoing Recitals, which are incorporated with and
are made a part of this Agreement, and in further consideration of the mutual
covenants and agreements contained in this Agreement, the parties hereto agree
as follows:
ARTICLE 1: DEFINITIONS
Whenever they are used in this Agreement, the following capitalized terms
shall have the respective meanings defined in this ARTICLE 1.
1.1 Affiliate. "Affiliate" shall mean any present or future domestic or
foreign corporation or entity which shall be owned or controlled directly or
indirectly by Artann or Xxxxxxxxx or which owns or controls Artann (either
directly or indirectly) or which is under common ownership or control with
Artann (either directly or indirectly).
1.2 MBI Technology. "MBI Technology" means any and all knowledge,
information, know-how, methods and devices, whether patentable or not, owned or
controlled by MBI and relating to the method or process of elasticity imaging as
disclosed or shown in the MBI Patents for any purpose and the following assets
of MBI: computers, electrical and electronic components, Teksean pressure sensor
arrays and software purchased by MBI for project development.
1.3 MBI Patents. "MBI Patents" means all method, device and/or apparatus
patents and patent applications (in any country) that are owned or controlled by
MBI, alone or jointly with others, and which relate to the MBI Technology,
including, without limitation (i) U.S. Patent No. 5,265,612, dated November 30,
1993, entitled "Intracavity Ultrasonic Device for Elasticity Imaging," (the
"Existing Device Patent") and any non-U.S. counterparts, and any continuations,
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continuations-in-part, or divisional applications and any U.S. or non-US.
patents resulting from such applications and any reissues thereof and (ii)
International Publication Number WO 94/14375, dated July 7, 1994, entitled
"Method and Apparatus for Elasticity Imaging," (the "Pending Method/Device
Patent") and any continuations, continuations-in-part, or divisional
applications and any U.S. or non-US. patents resulting from such applications
and any reissues thereof.
1.4 Patented Products. "Patented Products" means each and every product
that is covered by any valid claim of any of the MBI Patents (including issued
patents and pending patents). Each claim of the MBI Patents shall be presumed
valid in accordance with 35 U.S.C. 282.
1.5 Licensing of Patented Products. "Licensing of Patented Products" means
the licensing by Artann or its Affiliates of the MBI Patents to enable a third
party to manufacture the Patented Products.
1.6 Manufacture and Sale of Patented Products. "Manufacture and Sale of
Patented Products" means the manufacture and sale by Artann or its Affiliates of
Patented Products.
1.7 Gross Revenue. "Gross Revenue" means the gross royalty, invoice or
billing price for Licensing of Patented Products or the Manufacture and Sale of
Patented Products (as the case may be) by Artann or its Affiliates, with no
deductions except for: (1) the actual cost of freight charges, if any, if stated
separately from the ordinary net invoice price; (2) trade, quantity and cash
discounts, if any, actually allowed; (3) any taxes or duties applicable to such
products, provided such taxes or duties are actually paid and are shown
separately from the net invoice price of such products (no deduction shall be
made for taxes based on net income); and (4) such credits or allowances, if any,
given or made because of the rejection or return of such products.
1.8 Confidential Information. "Confidential Information" means the
technical information, know-how, technology, formulae, devices, designs,
configurations, prototypes, ideas, inventions, improvements, data, files,
supplier and customer identities and lists, accounting records, project
management plans, and other information and documentation to which a person or
entity has rights relating to this Agreement or the MBI Technology (embodied in
the MBI Technology) and all copies and tangible embodiments thereof (in whatever
form or medium) that are not known to the public.
ARTICLE 2: TRANSFER AND COMMERCIALIZATION OF THE MBI TECHNOLOGY
2.1 Assignment of MBI Technology to Artann. Subject to the provisions of
this Agreement, MBI hereby assigns and transfers to Artann all of MBI's right,
title and interest in the MBI Technology, including without limitation, the MBI
Patents, computers, electrical and electronic components, Teksean pressure
sensor arrays and software purchased by MBI for project development (the
"Assignment"). The parties agree that MBI will execute and deliver such
additional assignments of the MBI Technology and MBI Patents to Artann as may be
necessary to perfect the foregoing Assignment, including without limitation, any
assignments of the MBI Patents for filing with any governmental patent office.
2.2 Warranty Disclaimer. The MBI Technology is transferred to Artann "as
is" and without warranty. DTR AND MBI EXCLUDE AND DISCLAIM ALL EXPRESS AND
IMPLIED WARRANTIES, INCLUDING SPECIFICALLY ANY IMPLIED WARRANTY OF
MERCHANTABILITY OR OF FITNESS FOR PARTICULAR PURPOSE.
2.3 Subsequent Transfers. Artann and its Affiliates may sell, assign,
license, sublicense, grant security interests in or otherwise transfer rights to
the MBI Technology and MBI Patents only pursuant to a written agreement that is
subject to and consistent with all of the terms
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and conditions of this Agreement (a "Subsequent Transfer"). Artann will not
enter into a Subsequent Transfer arrangement or agreement without DTR's prior
written consent.
2.4 Continued Efforts of Artann. Artann shall use reasonable efforts
consistent with the exercise of its best judgment to exploit the rights
transferred under this Agreement, and shall develop a plan for developing and
commercializing the MBI Technology and the MBI Patents, directly and/or through
approved sublicensing or other ventures, on terms not inconsistent with the
terms of this Agreement.
ARTICLE 3: PRESERVATION OF INTELLECTUAL PROPERTY RIGHTS
3.1 Patent Prosecution. Except for reimbursement by MBI pursuant to Section
3.2 below, Artann shall hereafter have the right to file and prosecute, in its
name, United States and foreign patent applications and maintain such patents in
connection with the MBI Technology. The parties acknowledge that Artann shall
have final authority over all decisions concerning prosecution of patents
pertaining to the MBI Technology. Artann and Xxxxxxxxx agree to keep DTR fully
informed of all patent filing and prosecution efforts for the MBI Technology,
and give DTR the opportunity to comment on such filing and prosecution efforts.
3.2 Reimbursement By MBI of Costs for Prosecution of the Pending
Method/Device Patent in the United States. MBI will promptly reimburse or pay
all expenses incurred by Artann in the prosecution in the United States of the
Pending Method/Device Patent and a continuation-in-part (CIP) application on
"Apparatus for Ultrasonic Elasticity Imaging" (the "CIP Application"); provided,
however, the obligations of MBI under this Section 3.2 shall terminate after
reimbursement or payment by MBI of an aggregate of $5,000 for such patent
prosecution. MBI will pay all fees that will be required for having the pending
MBT Patent issued.
3.3 Payment to Xxxx Xxxxxxx. MBI will promptly pay Xxxx Xxxxxxx his
outstanding invoices in the aggregate amount of $1,500 for previous services
rendered by Xx. Xxxxxxx in the prosecution of the MBI Patents.
3.4 Infringement of the MBI Patents. If any party hereto obtains evidence
of alleged infringement of the MBI Patents, such party shall promptly notify the
other parties in writing of such potential infringement. Artann shall have the
right, but not the obligation, to bring suit at its expense against such alleged
third party infringer and to settle any such suit. In the event Artann decides
to bring suit, Artann shall give prompt written notice to DTR of such decision
to commence litigation.
3.5 Confidentiality. Each of the parties agrees to hereafter maintain the
confidentiality of all Confidential Information.
ARTICLE 4: PAYMENTS TO DTR
4.1 Acknowledgment By MBI and Xxxxxxxxx of Payments-to DTR: Payment of
$9,000 Obligation. MBI and Xxxxxxxxx each acknowledge and agree that: (i) all of
the payments to DTR under this ARTICLE 4 are in consideration of the Assignment
by MBI and DTR's 50% ownership interest in MBI and (ii) Xxxxxxxxx, waives
payment by Artann or MBI of any additional consideration for such Assignment.
The parties acknowledge that under a prior letter of understanding dated June
18, 1992, the authors of the inventions, including, without limitation, A.
Skovoroda, X. Xxxxxxxxx and Xxxxxxxxx (the "Authors"), must be rewarded for
assigning patent rights to MBI by payment by Artann to the Authors of an
aggregate amount of (a) $3,000, payable upon approval of the "Existing Device
Patent" with a total amount of payment up to an aggregate of $20,000 from
proceeds of commercialization of such patent and (b) $6,000 payable upon
approval of the "Pending Method/Device Patent" with a total amount of payment up
to an
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aggregate of $100,000 from proceeds of commercialization of such patent. If the
source of funding related to the MBI Technology that becomes available to Artann
is not a license fee, royalty or other payment from product sales but is a
direct investment, $240,000 from such investment will be paid to MBI and
distributed to the MBI partners on a pro rata basis as follows: (i) $120,000 to
DTR and (ii) $120,000 to Xxxxxxxxx (Artann) for due payment to the Authors and
for the expenses of future patenting and development of MBI Technologies. Artann
assumes and will indemnify DTR for all responsibilities for payments to the
Authors. DTR shall have no responsibilities for payments to the Authors or any
other inventors of the MBI Technology.
4.2 $120,000 Payment. Artann shall pay DTR, commencing on the date of this
Agreement: (i) thirty-three and one-third percent (33-1/3%) of the Gross
Revenues of Artann and its Affiliates from Licensing of Patented Products
anywhere in the world and (ii) three and one-third percent (3-1/3%) of the Gross
Revenues of Artann and its Affiliates from the Manufacture and Sale of Patented
Products anywhere in the world; up to a maximum payment of $120,000 to DTR under
this Section 4.2 (the "$120,000 Payment"). The parties acknowledge that DTR will
not receive 50% of the Gross Revenues because Artann has agreed to assume all
responsibilities for payments to the Authors.
4.3 Additional Percentage Payments to DTR. In addition to the $120,000
Payment, Artann shall pay each of the following percentage payments to DTR until
latest expiration date of the MBI Patents and any extensions thereof (the
"Additional Percentage Payments"):
(a) Commencing on the date of this Agreement: (i) twenty percent (20%)
of the Gross Revenues of Artann and its Affiliates from Licensing of
Patented Products anywhere in the world that are based on the Existing
Device Patent and (ii) two percent (2%) of the Gross Revenues of Artann and
its Affiliates from the Manufacture and Sale of Patented Products anywhere
in the world that are based on the Existing Device Patent;
(b) Commencing on the issuance of the Pending Method/Device Patent:
(i) ten percent (10%) of the Gross Revenues of Artann and its Affiliates
from Licensing of Patented Products anywhere in the world that are a breast
or prostate clinical device or method and (ii) one percent (1%) of the
Gross Revenues of Artann and its Affiliates from the Manufacture and Sale
of Patented Products anywhere in the world that are a breast or prostate
clinical device or method;
(c) Commencing on the issuance of the Pending Method/Device Patent:
(i) five percent (5%) of the Gross Revenues of Artann and its Affiliates
from Licensing of Patented Products anywhere in the world that are a breast
or prostate non-clinical (i.e. home or other non-clinical use) device or
method and (ii) one-half percent (1/2%) of the Gross Revenues of Artann and
its Affiliates from the Manufacture and Sale of Patented Products anywhere
in the world that are a breast or prostate non-clinical (i.e. home or other
non-clinical use) device or method.
(d) Commencing on the issuance of the CIP Application: (i) five
percent (5%) of the Gross Revenues of Artann and its Affiliates from
Licensing of Patented Products anywhere in the world that are based on the
CIP Application and (ii) one-half percent (1/2%) of the Gross Revenues of
Artann and its Affiliates from the Manufacture and Sale of Patented
Products anywhere in the world that are based on the CIP Application; and
(e) The parties acknowledge and agree that no amounts shall be payable
under Sections 4.3(b) or 4.3(c) above unless the Pending Method/Device
Patent is issued.
4.4 Payments In U.S. Dollars. All amounts payable under this Article 4
shall be paid in United States dollars to DTR by check mailed to the address
first set forth above, or to such other
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address as DTR may from time to time designate in writing to Artann. All
payments due under this Section 4 shall be calculated after Artann's Gross
Revenues are converted into United States dollars (in the event of payment in
non-United States dollars) by Artann. Any currency conversions that are
necessary to calculate payments shall be made at the exchange rate used by
Artann for financial accounting purposes in accordance with generally accepted
accounting principles.
4.5 Quarterly Payments to DTR. Within sixty (60) days after the close of
each calendar quarter, Artann shall pay DTR all amounts due under this Section 4
for Licensing of Patented Products or the Manufacture and Sale of Patented
Products (as the case may be) during the three months included in such calendar
quarter.
4.6 Quarterly Reports. With each payment under Section 4.5 above, Artann
shall provide DTR a quarterly written report of all sales, licenses or other
distributions of Patented Products by country and by Artann and its licensees in
such detail so as to enable DTR to calculate the proper amount of the accrued
payments due to DTR for that quarter.
4.7 Interest. Artann shall pay interest, at three percent (3%) above the
then prevailing prime rate as announced from time to time by Norwest Bank
Minnesota or its successor, on any payments due under this ARTICLE 4 and not
paid within the time period described in Section 4.5 above, to accrue from the
date due until paid.
4.8 Records. Artann agrees to keep accurate and detailed records required
for the computation and verification of payments to be paid hereunder, all in
accordance with generally accepted accounting principles. Artann shall permit
one or more representatives selected by DTR upon reasonable notice at mutually
agreeable reasonable times during normal business hours to inspect all such
records as may be necessary or desirable to determine the correctness of any
report or payment made under this Agreement or to obtain information concerning
payments to DTR for any period in the event of failure of Artann to report or
pay any payments due under the terms of this Agreement. The records required by
this Section 4.8 shall be maintained and available for inspection hereunder for
at least three (3) years following the calendar quarter to which they pertain.
ARTICLE 5: SECURITY INTEREST
Artann hereby grants DTR a security interest (the "Security Interest") in
the MBI Technology, including without limitation, the MBI Patents, as security
for payment and performance of Artann's obligations under this Agreement,
including without limitation, payment of the $120,000 Payment and the Additional
Percentage Payments. The parties agree to execute, deliver and file UCC
financing statements and other documents necessary to perfect and maintain the
Security Interest as a first priority Security Interest.
ARTICLE 6: INDEMNIFICATION AND INSURANCE
6.1 Indemnification by Artann. Artann shall indemnify and hold harmless DTR
and MBI, and their respective directors, officers, partners, employees and
representatives, jointly and severally, from and against all liabilities,
demands, damages, expenses, or losses, including, without limitation, costs and
attorneys' fees, arising from:
(a) the manufacture, use, lease, sale, or other disposition of any
Patented Products by Artann or its licensees;
(b) a third party's use of a Patented Product purchased, leased or
otherwise acquired from or through Artann or its licensees;
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(c) a third party's manufacture of a Patented Product at the request of
Artann or its licensees;
(d) any claim that the MBI Technology or the MBI Patents infringe any
patent, copyright, trade secret right, trademark right or other
proprietary right of a third party;
(e) from any claim that a Patented Product manufactured or sold by Artann
or its licensees infringes any trademark rights of a third party; and
(f) from any failure of Artann to comply with all applicable government
regulations, directives and laws as they may apply to the Patented
Products or Artann's activities hereunder.
6.2 Insurance. Commencing with the first commercial sales of Patented
Products, Artann agrees to maintain at its expense liability insurance to insure
against any of the indemnified liabilities in Section 6.1 above in an amount as
determined by Artann at its reasonable discretion. Artann shall provide DTR with
certification of such insurance.
ARTICLE 7: REPRESENTATIONS AND WARRANTIES
7.1 Authority of Artann. Artann represents and warrants that (i) the
transactions and activities contemplated by this Agreement have been duly
authorized and no other actions on its part or on the part of any other person
or entity are necessary to authorize the transactions and activities
contemplated by this Agreement and (ii) this Agreement is a legal, valid and
binding agreement enforceable against Artann in accordance with its terms,
except as the enforceability of this Agreement may be limited by equitable
principles, bankruptcy or other laws relating to or affecting creditors' rights
generally.
7.2 Prior Assignments of Proprietary Rights. Xxxxxxxxx represents and
warrants that prior to the execution of this Agreement, all inventors of the MBI
Technology had assigned to MBI all patent, copyright, trade secret and other
proprietary rights to the MBI Technology
ARTICLE 8: LIMITATION OF LIABILITY
EXCEPT FOR THE INDEMNIFICATION OBLIGATIONS OF ARTANN UNDER SECTION 6.1
ABOVE, NO PARTY BE LIABLE TO THE OTHER UNDER THIS AGREEMENT FOR INDIRECT,
SPECIAL, OR CONSEQUENTIAL DAMAGES, INCLUDING WITHOUT LIMITATION, LOST PROFITS.
ARTICLE 9: DEFAULT AND TERMINATION
9.1 Termination. This Agreement may be terminated only as follows (each of
the notices in Sections 9(a), (b) or (c) below are referred to as an "Event of
Default"):
(a) Nonpayment or Other Breach by Artann. If Artann fails to make any
payments to DTR within ten (10) days after the date due or fails to comply
with any other term or condition under this Agreement, DTR may elect to
give Artann written notice requiring Artann to cure such default. If Artann
has not cured such default within thirty (30) days after receipt of notice
from DTR, in addition to DTR's other remedies, this Agreement shall
terminate at the end of such thirty (30) day period (unless a dispute
resolution proceeding is then pending under Article 10 below).
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(b) Failure to Pay $120,000 Payment After Five Years. If the entire
amount of the $120,000 Payment has not been paid to DTR by the fifth
anniversary of the date of this Agreement, DTR may so notify Artann. If
Artann has not paid the entire $120,000 Payment within thirty (30) days
after receipt of such notice from DTR, this Agreement shall terminate at
the end of such thirty (30) day period (unless a dispute resolution
proceeding is then pending under Article 10 below).
(c) Mutual Agreement. This Agreement may be terminated at any time by
mutual written agreement among the parties.
9.2 Survival. The terms and provisions of Articles 1, and 3 through 11
(inclusive) of this Agreement shall survive the termination of this Agreement
and continued in full force and effect.
ARTICLE 10: DISPUTE RESOLUTION
10.1 Conflicts. It is expected that any disputes or differences that may
arise under this Agreement will be resolved in the usual course of business. If,
however, any dispute does arise among the parties which relates to or arises
from this Agreement, whatever its nature, the parties agree to forego litigation
and proceed as follows: Any party may notify the other parties of the matter in
dispute and that it wishes to begin the dispute resolution procedure. Within
thirty (30) days after notification, a designated representative of each party
will meet and confer in an effort to resolve the problem. The parties may, if
they wish, agree to mediation or other voluntary form of dispute resolution. If
the matter is not resolved within thirty (30) days thereafter (or such further
time as they may agree), any party may elect to have the dispute arbitrated in
the manner provided in Section 10.2.
10.2 Arbitration. Any dispute or claim not resolved in the manner provided
under Section 10.1 above shall be resolved by final and binding arbitration.
Unless the parties agree otherwise, the arbitration shall be conducted in
accordance with the rules of the American Arbitration Association then in
effect. There shall be a single arbitrator, whose award shall become final ten
(10) days after it is delivered in writing to the parties for their final
comment. The arbitration shall be governed by the United States Arbitration Act,
9 U.S.C. ss.1 et seq. Judgment upon the arbitrator's award may be entered by any
court having jurisdiction thereof. The arbitration shall be conducted in
Minneapolis, Minnesota, if initiated by Artann or Xxxxxxxxx, or in New York, New
York if initiated by DTR or MBI, and any awards shall be subject to the
limitations of liability expressed in this Agreement.
10.3 Remedies. In addition to the remedies under this Agreement and
applicable law, the prevailing party in any action under this Agreement shall be
entitled to injunctive relief and reimbursement of costs and reasonable
attorneys' fees.
ARTICLE 11: GENERAL
11.1 Notices. Any notice required or permitted to be given under this
Agreement shall be sufficient if in writing and delivered personally or sent by
registered or certified mail, postage prepaid and return receipt requested (or
sent via fax and confirmed by mail), to the attention of the parties and the
respective addresses set forth in the first paragraph of this Agreement (or to
such other address as the parties shall designate by notice to the other in
accordance with this Section 11. 1) and shall be deemed to have been given as of
the date of personal delivery, as of the date on the receipt or as of the date
returned unclaimed by the Postal Service.
11.2 Modifications. This Agreement can only be modified by written
agreement duly signed by the parties.
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11.3 Governing Law. This Agreement shall be governed by and construed and
enforced in accordance with the laws of the State of Minnesota.
11.4 Severability. If any provision of this Agreement is held to be
illegal, invalid or unenforceable under present or future law, such provision
shall be fully severable; this Agreement shall be construed and enforced as if
such illegal, invalid or unenforceable provision had never comprised a part
hereof; and the remaining provisions of this Agreement shall remain in full
force and effect and shall not be affected by the illegal, invalid or
unenforceable provision or by its severance from this Agreement. Furthermore, in
lieu of each such illegal, invalid or unenforceable provision, there shall be
added automatically as a part of this Agreement a provision as similar in terms
to such illegal, invalid or unenforceable provision as may be possible and be
legal, valid and enforceable.
11.5 Complete Agreement. This Agreement contains the complete agreement
between the parties concerning the subject matter hereof and supersedes all
prior understandings, proposals or agreements, and all prior communications
between the parties relating to the subject matter of this Agreement. This
Agreement shall be binding upon the parties hereto and their respective heirs,
personal representatives, successors and assigns.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
effective as of the day and year first above written.
MEDICAL BIOPHYSICS INTERNATIONAL DEVELOPED TECHNOLOGY
RESOURCE, INC.
By: By:
------------------------------------ -----------------------------------
Xxxxx X. Xxxxxxxxx, Xxxx X. Xxxx
Partner President
By: Developed Technology Resource, Inc,
Partner
By:
-----------------------------------
Xxxx X. Xxxx,
President
ARTANN CORPORATION ------------------------------------
dba ARTANN LABORATORIES Xxxxx X. Xxxxxxxxx
By:
-------------------------------------
Xxxxx X. Xxxxxxxxx,
President
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AMENDMENT NO. 1
TO
AGREEMENT FOR TRANSFER OF PATENT AND PROPRIETARY RIGHTS
This Amendment No. 1 to Agreement for Assignment of Patent and Proprietary
Rights ("Amendment No. 1") is entered into effective as of the August 29, 1996,
by and among Medical Biophysics International, a Minnesota partnership ("MBI"),
with principal offices at 00000 Xxxxxxxxxx Xxxxx, Xxxxxxxxxx, Xxxxxxxxx 00000;
Developed Technology Resource, Inc., a Minnesota corporation ("DTR"), with
principal offices at 00000 Xxxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxxx, Xxxxxxxxx
00000; Xxxxx X. Xxxxxxxxx, whose business address is 000 Xxxxxxxxxx Xxxx, Xxxx
Xxxxxxxxx, Xxx Xxxxxx 00000 ("Xxxxxxxxx"); and Artann Corporation dba Artann
Laboratories, a New Jersey corporation ("Artann"), with principal offices at 000
Xxxxxxxxxx Xxxx, Xxxx Xxxxxxxxx, Xxx Xxxxxx 00000.
RECITALS
A. MBI, DTR, Xxxxxxxxx and Artann entered into an Agreement for Assignment of
Patent and Proprietary Rights as of September 5, 1995 (the "Agreement"),
which has not been amended prior to the date hereof;
X. Xxxxxxxxx and Artann have informed DTR that Xxxxxxxxx and Artann have
continued to comply with all of the terms and provisions of the Agreement;
C. Effective August 29, 1996, Artann has entered into an Operating Agreement
("Operating Agreement") of Armed, L.L.C., an Alabama limited liability
company ("Armed"), among Xxxxxxxx Xxxxx, X. Xxxxxxxxx, M. Xxxxx, Xxxx
Tselesin, Graco Resources, Inc., Xxxx Xxxx, Xxx Xxxxx, Xxxxxx Investments,
Ltd. and Xx Xxxxxxxxxxx (collectively, the "Members"), a copy of which has
been provided to DTR;
D. Pursuant to the Operating Agreement, Artann, Xxxxxxxxx, and Armed have
entered into an Assignment dated August 29, 1996 (the "Artann/Armed
Assignment"), under which Artann has assigned the MBI Technology to Armed,
a copy of which has been provided to DTR;
E. Pursuant to the Operating Agreement and in consideration of the
Artann/Armed Assignment, Armed has issued to Artann 50.5 Class A Units of
Armed, representing 50.5% of the outstanding Class A and Class B Units of
Armed (those units and any other units or member interests of Armed now or
hereafter beneficially owned by Artann, Xxxxxxxxx or their Affiliates are
referred to as the "Artann-Owned Units");
F. Pursuant to the Operating Agreement, the Class B Members of Armed
identified therein have agreed to make certain loans to Armed, secured by a
security interest in all of Armen's assets, including the MBI Technology;
G. Pursuant to the Operating Agreement, the Class B Members of Armed have
received an option ("Option") to purchase additional Class B Units of
Armed, which if exercised could result in the percentage of the outstanding
Class A and B Units of Armed owned by Artann to be reduced;
H. Pursuant to a License Agreement (the "Armed/Artann License"), Armed will
grant to Artann a license to use and commercialize the non-mechanical
imaging portions of the MBI Technology;
12
I. The parties desire to amend and supplement the Agreement pursuant to
Section 11.2 thereof, on the terms as described below.
AGREEMENT
In consideration of the foregoing Recitals, which are incorporated with and
are made a part of this Amendment No. 1, and in further consideration of the
mutual covenants and agreements contained in this Amendment No. 1, the parties
hereto agree and amend the Agreement as follows:
1. Definitions. Capitalized terms not otherwise amended or defined herein
have the same respective meanings as set forth in the Agreement.
2. Amendment of Section 1.1. Section 1.1 of the Agreement is hereby amended
to include the following additional provision:
Armed shall not be considered an "Affiliate" of Artann for purposes of the
Agreement or this Amendment No. 1.
3. Amendment of Section 1.3. Section 1.3 of the Agreement is hereby
superseded and deleted in its entirety and replaced with the following new
Section 1.3:
1.3 MBI Patents. "MBI Patents" means all method, device and/or
apparatus patents and patent applications (in any country) that are now or
hereafter owned or controlled by MBI or its assigns, alone or jointly with
others, and which relate to the MBI Technology, including, without
limitation: (i) U.S. Patent No. 5,265,612, dated November 30, 1993,
entitled "Intercavity Ultrasonic Devices for Elasticity Imaging," and any
non-U.S. counterparts, and any continuations, continuations-in-part
("CIP"), or divisional applications and any U.S. or non-U.S. patents
resulting from such applications and any reissues thereof, (ii) U.S. Patent
No. 5,524,636 dated June 11, 1996, entitled "Method and Apparatus for
Elasticity Imaging," and any non-U.S. counterparts, and any continuations,
continuations-in-part, or divisional applications and any U.S. or non-U.S.
patents resulting from such applications and any reissues thereof" and
(iii) U.S. Patent Application Number 08/607,645 filed February 27, 1996
entitled "Method and Device for Mechanical Imaging of Prostate" (the
"Pending Patent"), and any non-U.S. counterparts, and any continuations,
continuations-in-part, or divisional applications and any U.S. or non-U.S.
patents resulting from such applications and any reissues thereof.
4. Amendment of Section 1.5. Section 1.5 of the Agreement is hereby
superseded and deleted in its entirety and replaced with the following new
Section 1.5;
1.5 Licensing/Assignment of Patented Products. "Licensing/Assignment
of Patented Products" means the licensing or assignment (or other transfer)
by Artann, Xxxxxxxxx or Armed and their respective Affiliates and
sublicensees and assignees (together "Assignees") of any of the MBI Patents
to enable a third party to manufacture the Patented Products.
5. Amendment of Section 1.6. Section 1.6 of the Agreement is hereby
superseded and deleted in its entirety and replaced with the following new
Section 1.6:
1.6 Manufacture and Sale of Patented Products. "Manufacture and Sale
of Patented Products" means the manufacture and sale by Artann, Xxxxxxxxx
or Armed and their respective Affiliates and Assignees of Patented
Products.
13
6. Amendment of Section 1.7. Section 1.7 of the Agreement is hereby
superseded and deleted in its entirety and replaced with the following new
Section 1.7:
1.7 Artann Gross Revenues. "Artann Gross Revenues" means any payment
of cash or cash equivalents (for conversion into U.S. dollars pursuant to
Section 4.4) to Artann, Xxxxxxxxx or their respective Affiliates,
pertaining to the use, license, assignment or commercialization of the MBI
Technology and arising from:
A. the gross royalty, invoice or billing price for
Licensing/Assignment of Patented Products or the Manufacture and
Sale of Patented Products (as the case may be) by Artann,
Xxxxxxxxx and their respective Affiliates or Assignees (excluding
Armed) anywhere in the world, with no deductions except for: (1)
the actual cost of freight charges, if any, if stated separately
from the ordinary net invoice price; (2) trade, quantity and cash
discounts, if any actually allowed; (3) any taxes or duties
applicable to such products, provided such taxes or duties are
actually paid and are shown separately from the net invoice price
of such products (no deduction shall be made for taxes based on
net income); and (4) such credits or allowances, if any, given or
made of the rejection or return of such products; or
B. any dividends, distributions or other payments of any kind from
Armed to Artann, Xxxxxxxxx or their Affiliates;
provided, however, the term "Artann Gross Revenues" shall not include
any payments by Armed to Artann, Xxxxxxxxx or their Affiliates for
consulting work or the development of prototypes so long as such
payments are for actual services rendered and are not made with the
intent of diminishing the amounts otherwise payable by Artann or
Xxxxxxxxx to DTR under the Agreement or Amendment No. 1.
7. Amendment of Section 4.1. Section 4.1 of the Agreement is hereby amended
by adding the following additional provision at the end of Section 4.1:
Artann represents that none of the Authors has any further right to payment
with respect to the MBI Technology. Section 4.1 of the Agreement shall not
require Armed, or Artann or Xxxxxxxxx based on investments in Armed, to
make any payments to XXX.
0. Amendment of Section 4.2. Section 4.2 of the Agreement is hereby
superseded and deleted in its entirety and replaced with the following new
Section 4.2:
4.2 $120,000 Payment. Artann shall pay DTR, commencing on the date of
this Agreement: (i) thirty-three and one-third percent (33-1/3%) of the
Artann Gross Revenues from Licensing/Assignment of Patented Products
anywhere in the world by Artann, Xxxxxxxxx, Armed or their respective
Affiliates or Assignees and (ii) three and one-third percent (3-1/3%) of
the Artann Gross Revenues from the Manufacture and Sale of Patented
Products anywhere in the world by Artann, Xxxxxxxxx, Armed or their
respective Affiliates or Assignees, up to a maximum payment of $120,000 to
DTR unde this Section 4.2 (the "$120,000 Payment"). The parties acknowledge
that DTR will not receive 50% of the Artann Gross Revenues because Artann
has agreed to assume all responsibilities for payments to the Authors.
9. Amendment of Section 4.3. Section 4.3 of the Agreement is hereby
superseded and deleted in its entirety and replaced with the following new
Section 4.3:
14
4.3 Additional Percentage Payments to DTR. In addition to the $120,000
Payment, Artann shall pay each of the following percentage payments to DTR
until latest expiration date of the MBI Patents and any extensions thereof
(the "Additional Percentage Payments"):
(a) Commencing on the date of this Agreement: (i) twenty percent (20%)
of the Artann Gross Revenues from the Licensing of Patented Products
anywhere in the world by Artann, Xxxxxxxxx, Armed or their respective
Affiliates or Assignees that are based on Patent No. 5,265,612 dated
November 30, 1993, entitled "Intracavity Ultrasonic Device for
Elasticity Imaging"; and (ii) two percent (2%) of the Artann Gross
Revenues from the Manufacture and Sale of Patented Products anywhere
in the world by Artann, Xxxxxxxxx, Armed or their respective
Affiliates or Assignees that are based on Patent No. 5,265,612 dated
November 30, 1993, entitled "Intracavity Ultrasonic Device for
Elasticity Imaging";
(b) Commencing on the date of this Agreement with respect to the
issued MBI Patents: (i) ten percent (10%) of the Artann Gross Revenues
from the Licensing of Patented Products anywhere in the world by
Artann, Xxxxxxxxx, Armed or their respective Affiliates or Assignees
that are a breast or prostate clinical device or method based on
Patent No. 5,524,636 dated June 11, 1996, entitled "Method and
Apparatus for Elasticity Imaging"; and (ii) one percent (1%) of the
Artann Gross Revenues from the Manufacture and Sale of Patented
Products anywhere in the world by Artann, Xxxxxxxxx, Armed or their
respective Affiliates or Assignees that are a breast or prostate
clinical device or method based on Patent No. 5,524,636 dated June 11,
1996, entitled "Method and Apparatus for Elasticity Imaging";
(c) Commencing on the date of this Agreement with respect to the
issued MBI Patents: (i) five percent (5%) of the Artann Gross Revenues
from the Licensing of Patented Products anywhere in the world by
Artann, Xxxxxxxxx, Armed or their respective Affiliates or Assignees
that are a breast and not clinical (i.e., home or other non-clinical
use) device or method based on Patent No. 5,524,636 dated June 11,
1996, entitled "Method and Apparatus for Elasticity Imaging"; and (ii)
one-half percent (1/2%) of the Artann Gross Revenues from the
Manufacture and Sale of Patented Products anywhere in the world by
Artann, Xxxxxxxxx, Armed or their respective Affiliates or Assignees
that are a breast, and not clinical (i.e., home or other non-clinical
use) device or method based on Patent No. 5,524,636 dated June 11,
1996 entitled "Method and Apparatus for Elasticity Imaging";
(d) Commencing on the issuance of any CIP application for the MBI
Patents; (i) five percent (5%) of the Artann Gross Revenues from the
Licensing of Patented Products anywhere in the world by Artann,
Xxxxxxxxx, Armed or their respective Affiliates or Assignees that are
based on such CIP application; and (ii) one-half percent (1/2%) of the
Artann Gross Revenues from the Manufacture and Sale of Patented
Products anywhere in the world by Artann, Xxxxxxxxx, Armed or their
respective Affiliates or Assignees that are based on such CIP
application.
10. Amendment of Article 5. Article 5 of the Agreement is hereby superseded
and deleted in its entirety and replaced with the following new Article 5:
ARTICLE 5: SECURITY INTEREST
5.1 Grant of Security Interest in Artann-Owned Units. Artann hereby
grants DTR a security interest (the "Security Interest") in the
Artann-Owned Units (collectively, the "Collateral"), as security for
payment and performance of Artann's obligations under
15
this Agreement and Amendment No. 1, including without limitation, payment
of the $120,000 Payment and the Additional Percentage Payments
(collectively, the "Obligations"). Artann and Xxxxxxxxx will promptly
deliver and continue to deliver to DTR all certificates representing all of
the Artann-Owned Units, and will execute, deliver and file UCC financing
statements and other documents, all as necessary to perfect and maintain
the Security Interest as a first priority security interest in the
Collateral. Artann and Xxxxxxxxx represent and warrant that Artann holds
all right, title and interest in the Artann-Owned Units and none of the
Artann-Owned Units are or will be subject to any lien or security interest
other than the Security Interest in favor of DTR. If Artann or Xxxxxxxxx
are in default of their obligations, DTR may elect to foreclose on its
Security Interest and take ownership and possession of the Artann-Owned
Units or, if such units are subject to a call or assessment obligation, in
lieu of foreclosure DTR may elect to instruct Armed to pay all
distributions with respect to the Artann-Owned Units to DTR and Armed will
comply with that instruction (in lieu of distributions paid to Artann,
Xxxxxxxxx or their Affiliates).
5.2 Notice. Artann and Xxxxxxxxx will promptly notify DTR of any (i)
dilution in the ownership of Armed by Artann, Xxxxxxxxx or their Affiliates
or (ii) any additional Artann-Owned Units beneficially owned by Artann,
Xxxxxxxxx or their Affiliates. DTR will promptly notify Artann and
Xxxxxxxxx of any assignment of DTR's rights hereunder to any third party.
5.3 Consent to Transfer of Artann-Owned Units to DTR. Within 60 days
after the execution of this Amendment No. 1, Artann and Xxxxxxxxx will
deliver to DTR a consent signed by Armed and each of its Members,
consenting to the transfer of the Artann-Owned Units to DTR if DTR
forecloses on its Security Interest and obtains beneficial ownership of the
Artann-Owned Units.
5.4 Release of Prior Security Interest. Concurrently with the creation
of the Security Interest under this Amendment No. 1, and with the
Collateral as substitute collateral, DTR hereby releases any security
interest in the MBI Patents and MBI Technology and will deliver promptly to
Armed UCC-3 Statements of Termination and other documents prepared by Armed
in recordable form for terminating of record any other agreements or
documents evidencing or perfecting the above security interest in the MBI
Patents and MBI Technology (whether recorded in the Office of the Secretary
of State of Minnesota or New Jersey, the U.S. Patent and Trademark Office
or in any other governmental office).
11. Amendment of Article 9. Article 9 of the Agreement is hereby superseded
and deleted in its entirety and replaced with the following new Article 9:
ARTICLE 9: DEFAULT AND TERMINATION
9.1 Termination. This Agreement may be terminated only as follows
(each of the notices in Sections 9(a), (b) or (c) below are referred to as
an "Event of Default"):
(a) Nonpayment or Other Breach by Artann. If Artann or Xxxxxxxxx
fails to make any payments to DTR within ten (10) days after the date
due or fails to comply with any other term or condition under this
Agreement, DTR may elect to give Artann and Xxxxxxxxx written notice
requiring Artann and Xxxxxxxxx to cure such default. If Artann and
Xxxxxxxxx have not cured such default within thirty (30) days after
receipt of notice from DTR, in addition to DTR's other remedies, this
Agreement shall terminate at the end of such thirty (30) day period
(unless a dispute resolution proceeding is then pending under Article
10 below) and DTR shall have
16
the rights and remedies described in Section 9.3 below, in addition to
its other remedies at law or in equity.
(b) Failure to Pay $120,000 Payment After Seven Years. If the
entire amount of the $120,000 Payment has not been paid to DTR by the
seventh anniversary of the date of this Amendment No. 1, DTR may so
notify Artann and Xxxxxxxxx. If Artann and Xxxxxxxxx have not paid the
entire $120,000 Payment within thirty (30) days after receipt of such
notice from DTR, this Agreement shall terminate at the end of such
thirty (30) day period (unless a dispute resolution proceeding is then
pending under Article 10 below), and DTR shall have the rights and
remedies described in Section 9.3 below, in addition to its other
remedies at law or in equity.
(c) Mutual Agreement. This Agreement may be terminated at any
time by mutual written agreement amount the parties.
9.2 Survival. The terms and provisions of Article 1, and 3 through 11
(inclusive) of this Agreement shall survive the termination of this
Agreement and continued in full force and effect. No termination of this
Agreement shall terminate Articles 2 or 11 of this Agreement.
9.3 Rights and Remedies of DTR. If Artann or Xxxxxxxxx breaches any of
the terms or provisions of this Agreement, without timely cure as provided
herein, or if DTR terminates this Agreement under Section 9.1 above (an
"Event of Default"), DTR shall have the right to foreclose its Security
Interest and receive all right, title and interest in and to the Collateral
as a secured party under the Minnesota Uniform Commercial Code or any other
applicable law. If any notification of intended disposition of any of the
Collateral is required by law, such notification shall be deemed reasonably
and properly given at least ten (10) days before such disposition in the
manner described in Section 10.1 of the Agreement. Artann agrees, if an
Event of Default occurs, to make the Collateral available to DTR at a place
or places acceptable to DTR, and to pay all costs of DTR, including
reasonable attorneys' fees, incurred in the removal of and transfer of
rights to the Collateral and the enforcement of any of DTR's rights.
12. Consent and Representation of DTR. DTR hereby consents to the
Artann/Armed Assignment. DTR represents and warrants to Armed that DTR (a) has
not granted any security interest or lien in the MBA Technology to any third
party and (b) no officer of DTR has actual knowledge, without inquiry, of any
claim or right of any third party in or to the MBI Technology, except as
disclosed in the Agreement or this Amendment No. 1. Except as provided in the
preceding sentence, DTR makes no representation or warranty to Armed, its
Members or their Affiliates regarding the MBI Patents or other MBI Technology.
13. Additional Agreements of Artann and Xxxxxxxxx. So long as any amounts
are payable to DTR under this Agreement (whether or not accrued): (i) Artann and
Xxxxxxxxx shall provide DTR on a quarterly basis financial information
concerning Artann and the basis for any payments under this Agreement and (ii)
DTR and its representatives shall have the right to audit and inspect the books
and records of Artann and Xxxxxxxxx and ensure compliance with this Agreement.
Artann will provide DTR a copy of the License Agreement promptly after it is
signed.
14. Effect of Amendment. All of the terms and provisions of the Agreement
shall remain unchanged and in full force and effect, pursuant to the terms
thereof, except to the extent expressly amended and supplemented by this
Amendment No.. This Amendment No. 1 may be executed by fax and in any number of
counterparts, each of which, when executed and delivered,
17
shall be deemed to be an original and all of which together shall be deemed to
be one and the same instrument, and shall be deemed effective upon the date
first written above.
IN WITNESS WHEREOF, the parties hereto have executed this Amendment No. l .
MEDICAL BIOPHYSICS INTERNATIONAL DEVELOPED TECHNOLOGY
RESOURCE, INC.
By: By:
---------------------------------- -------------------------------------
Xxxxx X. Xxxxxxxxx, Xxxx X. Xxxx,
Partner President
By: Developed Technology Resource, Inc.
Partner
By:
------------------------------
Xxxx X. Xxxx,
President
ARTANN CORPORATION ------------------------------------
dba ARTANN LABORATORIES Xxxxx X. Xxxxxxxxx
By:
----------------------------------
Xxxxx X. Xxxxxxxxx,
President
AGREEMENT AND CONSENT OF ARMED AND DTR
Armed has read and understands the Agreement, as modified by the above
Amendment No. 1, and in consideration of DTR's execution of Amendment No. 1,
Armed and DTR agree as follows:
1. Definitions. Capitalized terms used below have the same respective
meanings as set forth in the Agreement, as modified by Amendment No. 1
2. Notification to DTR. So long as DTR holds its Security Interest in the
Artann-Owned Units, Armed will provide DTR at least ten (10) days advance
written notice of any (i) proposed dividends, distributions, consulting fees or
other payments of any kind from Armed to Artann or Xxxxxxxxx or their Affiliates
or (ii) proposed issuance, purchase or transfer of any existing or prospective
Artann-Owned Units.
3. Additional Agreements of Armed. So long as DTR holds its Security
Interest in the Artann-Owned Units: (i) Armed will deliver to DTR any
certificates representing the Artann-Owned Units, (ii) Armed will not take any
actions which would prevent DTR from foreclosing upon its Security Interest and
receiving ownership of Artann-Owned Units, (iii) Armed will not structure any
distributions, fees or other payments to Artann, Xxxxxxxxx or their Affiliates
in any manner intended to diminish the amount otherwise payable by Artann,
Xxxxxxxxx to DTR under the Agreement or Amendment No. 1, (iv) Armed will
promptly notify DTR of any call or assessment applicable to the Artann-Owned
Units and (v) in the event of foreclosure of the Security Interest,
18
Armed consents to and will assist DTR with receipt of the ownership of the
Artann-Owned Units. If Artann or Xxxxxxxxx are in default of their obligations,
DTR may elect to foreclose on its Security Interest and take ownership and
possession of the Artann-Owned Units or, if such units are subject to a call or
assessment obligation, in lieu of foreclosure DTR may elect to instruct Armed to
pay all distributions with respect to the Artann-Owned Units to DTR and Armed
will comply with that instruction (in lieu of distributions paid to Artann,
Xxxxxxxxx or their Affiliates).
4. Consent to Transfer of Artann-Owned Units to DTR. Within 30 days after
the execution of this Amendment No. 1, Armed will deliver to DTR a consent
signed by Armed and each of its Members, consenting to the transfer of the
Artann-Owned Units to DTR if DTR forecloses on its Security Interest and obtains
beneficial ownership of the Artann-Owned Units.
5. Payments to DTR. Nothing in the Agreement of Amendment No. 1 shall
require Armed to make payments directly by Armed to DTR, unless DTR forecloses
upon its Security Interest and receives ownership of the Artann-Owned Units.
6. Release and Assignment. Concurrently with the creation of the Security
Interest under Amendment No. 1, and with the Collateral as substitute
collateral, DTR hereby releases any security interest in the MBI Patents and MBI
Technology and will deliver promptly to Armed UCC-3 Statements of Termination
and other documents prepared by Armed in recordable form for terminating of
record any other agreements or documents evidencing or perfecting the above
security interest in the MBI Patents and MBI Technology (whether recorded in the
Office of the Secretary of State of Minnesota or New Jersey, the U.S. Patent and
Trademark Office or in any other governmental office). DTR hereby consents to
the Artann/Armed Assignment. DTR represents and warrants to Armed that DTR (a)
has not granted any security interest or lien in the MBI Technology to any third
party and (b) no officer of DTR has actual knowledge, without inquiry, of any
claim or right of any third party in or to the MBI Technology, except as
disclosed in the Agreement or Amendment No. 1. Except as provided in the
preceding sentence, DTR makes no representation of warranty to Armed, its
Members or their Affiliates regarding the MBI Patents or other MBI Technology.
IN WITNESS WHEREOF, Armed and DTR have executed the foregoing Agreement and
Consent, which may be signed via fax and in counterpart.
ARMED, L.L.C. DEVELOPED TECHNOLOGY
RESOURCE, INC.
By: By:
---------------------------------- -----------------------------------
Xxxx X. Xxxx,
Title: President
-------------------------------
Date: Date:
------------------------------- --------------------------------
19
EXHIBIT B
Security Agreement
20
SECURITY AGREEMENT
SECURITY AGREEMENT made June 15, 1997, effective as of August 29, 1996 between
XXXXX X. XXXXXXXXX, a resident of the State of New Jersey ("Xxxxxxxxx"), ARTANN
CORPORATION, a New Jersey corporation ("Artann") and DEVELOPED TECHNOLOGY
RESOURCE, INC., a Minnesota corporation ("DTR").
IN CONSIDERATION OF the mutual covenants and agreements set forth below and in
the Agreement and Amendment No. 1 defined below, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged,
Xxxxxxxxx and Artann hereby grant DTR a security interest in any and all units
or membership interests of ArMed, LLC, an Alabama limited liability company, now
or hereafter owned by Xxxxxxxxx or Artann, and the distributions and proceeds
thereof, as security for payment and performance of the obligations of Xxxxxxxxx
and Artann under that certain Agreement for Transfer of Patent and Proprietary
Rights effective as of September 5, 1995 among Medical Biophysics International,
a Minnesota partnership, DTR, Xxxxxxxxx and Artann (the "Agreement"), as amended
by Amendment No. 1 effective as of August 29, 1996 ("Amendment No. 1"),
including, without limitation, payment of the $120,000 Payment and Additional
Percentage Payments, as defined in the Agreement and Amendment No. 1.
IN WITNESS WHEREOF, the undersigned have executed this Security Agreement on the
date and year set forth above effective as of August 29, 1996.
ARTANN CORPORATION
By:
----------------------------------------
Xxxxx X. Xxxxxxxxx, President
-------------------------------------------
XXXXX X. XXXXXXXXX
DEVELOPED TECHNOLOGY
RESOURCE, INC.
By:
----------------------------------------
Its:
---------------------------------------
21
