EXHIBIT 2.2
EXHIBIT A
TECHNOLOGY CROSS-LICENSE AGREEMENT
This TECHNOLOGY CROSS-LICENSE AGREEMENT (this "AGREEMENT") is entered
into on December 31, 2002, by and between Spacelabs Medical, Inc., a California
corporation ("SPACELABS"), and Spacelabs Xxxxxxx, Inc., a Delaware corporation
("XXXXXXX"). The effective date of this Agreement shall be the Closing Date
contemplated by the Stock Purchase Agreement dated December 23, 2002 among
Spacelabs, Xxxxxxx and certain other parties (the "EFFECTIVE DATE").
WHEREAS, Spacelabs is a company engaged in the business of developing,
manufacturing, marketing, and servicing patient monitoring, diagnostic
cardiology and clinical information systems products for use throughout the
healthcare industry directly and indirectly through its wholly-owned
subsidiaries;
WHEREAS, Xxxxxxx is in the business of developing, manufacturing,
marketing and servicing diagnostic cardiology, vital sign database management,
and other health related diagnostic products and services for use in primary and
acute care facilities; and
WHEREAS, the parties wish to enter into this Agreement to provide for
the terms on which each of the parties shall license to the other certain
technologies and related intellectual property that it owns relating to
electrocardiograph devices and associated patient monitoring databases and
tools;
NOW THEREFORE, in consideration of the premises and the mutual
agreements set forth herein, the parties hereto agree as follows:
A. DEFINITIONS
1. "AFFILIATES" means, with respect to any party, any entity that
controls, is controlled by, or is under common control with, such party. For the
sake of clarity, "AFFILIATES" shall include, with respect to Spacelabs,
Instrumentarium and all of its Affiliates and with respect to Xxxxxxx, Xxxxxxx
Cardiology Systems, Inc. and all of its Affiliates.
2. "XXXXXXX LICENSED TECHNOLOGY" means: (a) Xxxxxxx'x proprietary
'Pyramis(R)' ECG Management System technology, including all designs, concepts,
software, specifications, documentation and related know-how, as such technology
exists on the Effective Date, but excluding any licensed third party
technologies that may not be freely distributed; (b) any right, title and
interest Xxxxxxx has in or to those databases listed on Schedule C, including
the complete electronic files and related annotations and interpretations,
together with any software tools developed to aid in the use of such databases
and any notes, specifications or other documentation related to the use or
development of such tools, as such technology exists on the Effective Date; (c)
any right, title and interest Spacelabs does not already have (if any) in the
Heart Rate Variability algorithm developed in conjunction with the University of
Rochester, as such algorithm exists on the Effective Date; and (d) any and all
improvements made by or licensed to
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EXHIBIT A
Xxxxxxx relating to the University of Glasgow GRI algorithm, whether made prior
to or at any time after the Effective Date.
3. "ECG TECHNOLOGY" means all technology associated with the
Cosmos and Polaris projects, including designs, processes, methods, ideas,
algorithms, know-how, components, specifications, plans, schematics, tools,
hardware, software, firmware, notes, databases, reports, written materials and
other intellectual property of any kind, including without limitation the
technology set forth on Schedule A, whether or not patentable, together with any
patents or patent applications now or hereafter existing relating thereto. For
avoidance of doubt, the ECG Technology does not include any portion of the
Xxxxxxx Licensed Technology.
4. "SPACELABS LICENSED TECHNOLOGY" means (a) the designs,
concepts, software, specifications, documentation and related know-how embodied
in the Spacelabs 12-lead electrocardiograph product specifically described on
Schedule B, as such intellectual property exists on the Effective Date; (b) any
right, title and interest Spacelabs has in or to those databases listed on
Schedule C, including the complete electronic files and related annotations and
interpretations, together with any software tools developed to aid in the use of
such databases and any notes, specifications or other documentation related to
the use or development of such tools, as such technology exists on the Effective
Date; (c) any right, title and interest Spacelabs has in or to the Heart Rate
Variability algorithm developed in conjunction with the University of Rochester,
as such algorithm exists on the Effective Date; and (d) any and all improvements
made by or licensed to Spacelabs relating to the University of Glasgow GRI
algorithm, whether made prior to or at any time after the Effective Date. The
parties acknowledge that the Spacelabs Licensed Technology expressly excludes
intellectual property that relates to (i) respiration monitoring or measurement,
(ii) Multiview arrhythmia or (iii) Multiview ST analysis.
B. OWNERSHIP AND CROSS-LICENSE OF ECG TECHNOLOGY AND RELATED TECHNOLOGY
1. Ownership.
(a) ECG Technology. The parties acknowledge and agree
that, as between Spacelabs and Xxxxxxx, and regardless of inventorship or any
joint or derivative efforts of either party with respect to development thereof
occurring prior to the Effective Date, Spacelabs is the owner of the ECG
Technology, and to the extent that Xxxxxxx has any ownership interest therein
Xxxxxxx hereby assigns such interest to Spacelabs.
(b) Pyramis Technology. The parties acknowledge and agree
that, as between Spacelabs and Xxxxxxx, Xxxxxxx is the owner of the
Pyramis(R)ECG Management System. Nothing in this Agreement shall be construed as
transferring any ownership interest in the Pyramis technology to Spacelabs.
(c) Modifications, Enhancements and Derivative Works.
Each party shall have the right to make modifications to, enhancements relating
to, or derivative works of any copyrighted works licensed to it by the other
party. In all cases, subject to licensor's rights in the
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underlying technology, the party creating such modifications, enhancements or
derivative works shall own such modifications, enhancements or derivative works.
2. Grant of License by Spacelabs. Spacelabs hereby
grants to Xxxxxxx and its Affiliates a perpetual, irrevocable, worldwide,
nonexclusive, royalty-free license under all proprietary rights pertaining to
the Spacelabs Licensed Technology to use, make, have made, import, publish,
distribute, display, copy, have copied, modify and create derivative works of
the Spacelabs Licensed Technology and to use, make, have made, import, market,
promote, distribute, sell, lease, license, loan and otherwise dispose of
products based on, using or incorporating the Spacelabs Licensed Technology.
Xxxxxxx may utilize contract manufacturers and one or more tiers of third party
distributors in connection with the foregoing license, provided that any such
contract manufacturer and third party distributors will be granted a sublicense
of the foregoing rights only to the extent necessary or useful to (a) make the
Spacelabs Licensed Technology and products based on, using or incorporating the
Spacelabs Licensed Technology (in the case of contract manufacturers) and (b)
publish, distribute and copy the Spacelabs Licensed Technology and market,
promote, distribute, sell, lease and license products based on, using or
incorporating the Spacelabs Licensed Technology (in the case of third party
distributors); provided that Xxxxxxx enters into a sublicense agreement with any
such contract manufacturer and third party distributors that is reasonably
designed to protect Spacelabs' proprietary interest in such Spacelabs Licensed
Technology, including any know-how. Other than the sublicenses expressly
permitted above, Xxxxxxx will not sell, assign, sublicense or otherwise dispose
of its license rights under this Agreement other than in connection with a
permitted assignment of this Agreement.
Except with respect to the University of Glasgow GRI algorithm, any
modifications, enhancements or improvements to the Spacelabs Licensed Technology
made by Spacelabs after the Effective Date are not included within such license,
and Spacelabs shall have no obligation to make any such modifications,
enhancements or improvements, or to update, upgrade, correct, fix or repair any
such Technology. However, notwithstanding the foregoing, Spacelabs shall, if it
becomes aware or has reason to believe that the Spacelabs Licensed Technology
has materially contributed to or caused a death or serious injury, or that the
Spacelabs Licensed Technology has malfunctioned and that if such malfunction
were to occur again it could cause death or serious injury, then (a) Spacelabs
shall use its best efforts to notify Xxxxxxx orally within 24 hours of first
becoming aware of such occurrence or malfunction, and to confirm such
notification by telefax within 24 hours of such oral notice, and (b) if
Spacelabs makes a modification to the Spacelabs Licensed Technology to correct
such malfunction or defect, Spacelabs shall inform Xxxxxxx promptly and provide
all information required to allow Xxxxxxx to implement a similar modification,
which modification shall be included within this license grant.
Spacelabs shall deliver all tangible documentation and other materials
(including all reports, validation test results, source code, requirements
documents, design specifications, design review notes, design notebooks,
software development and build notes, and the like) necessary for Xxxxxxx to use
the Spacelabs Licensed Technology within 30 days of the Effective Date and, with
respect to any improvements made or licensed by Spacelabs relating to the
University of Glasgow
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EXHIBIT A
GRI algorithm subsequent to the Effective Date, within 30 days after such
improvements are made or licensed.
3. Grant of License by Xxxxxxx. Xxxxxxx hereby grants to
Spacelabs and its Affiliates a perpetual, irrevocable, worldwide, nonexclusive,
royalty-free license under all proprietary rights pertaining to the Xxxxxxx
Licensed Technology to use, make, have made, import, publish, distribute,
display, copy, have copied, modify and create derivative works of the Xxxxxxx
Licensed Technology and to use, make, have made, import, market, promote,
distribute, sell, lease, license, loan and otherwise dispose of products based
on, using or incorporating the Xxxxxxx Licensed Technology. Spacelabs may
utilize contract manufacturers and one or more tiers of third party distributors
in connection with the foregoing license, provided that any such contract
manufacturer and third party distributors will be granted a sublicense of the
foregoing rights only to the extent necessary or useful to (a) make the Xxxxxxx
Licensed Technology and products based on, using or incorporating the Xxxxxxx
Licensed Technology (in the case of contract manufacturers) and (b) publish,
distribute and copy the Xxxxxxx Licensed Technology and market, promote,
distribute, sell, lease and license products based on, using or incorporating
the Xxxxxxx Licensed Technology (in the case of third party distributors);
provided that Spacelabs enters into a sublicense agreement with any such
contract manufacturer and third party distributors that is reasonably designed
to protect Burdicks' proprietary interest in such Xxxxxxx Licensed Technology,
including any know-how. Other than the sublicenses expressly permitted above,
Spacelabs will not sell, assign, sublicense or otherwise dispose of its license
rights under this Agreement other than in connection with a permitted assignment
of this Agreement.'
Except with respect to the University of Glasgow GRI
algorithm, any modifications, enhancements or improvements to the Xxxxxxx
Licensed Technology made by Xxxxxxx after the Effective Date are not included
within such license, and Xxxxxxx shall have no obligations to make any such
modifications, enhancements or improvements, or to update, upgrade, correct, fix
or repair any such Technology. However, notwithstanding the foregoing, Xxxxxxx
shall, if it becomes aware or has reason to believe that the Xxxxxxx Licensed
Technology has materially contributed to or caused a death or serious injury, or
that the Xxxxxxx Licensed Technology has malfunctioned and that if such
malfunction were to occur again it could cause death or serious injury, (a)
Xxxxxxx shall use its best efforts to notify Spacelabs orally within 24 hours of
first becoming aware of such occurrence or malfunction, and to confirm such
notification by telefax within 24 hours of such oral notice, and (b) if Xxxxxxx
makes a modification to the Xxxxxxx Licensed Technology to correct such
malfunction or defect, Xxxxxxx shall inform Spacelabs promptly and provide all
information required to allow Spacelabs to implement a similar modification,
which modification shall be included within this license grant.
Xxxxxxx shall deliver all tangible documentation and other
materials (including all reports, validation test results, source code,
requirements documents, design specifications, design review notes, design
notebooks, software development and build notes, and the like) necessary for
Spacelabs to use the Xxxxxxx Licensed Technology within 30 days of the Effective
Date and, with respect to any improvements made or licensed by Xxxxxxx relating
to the University of Glasgow GRI algorithm subsequent to the Effective Date,
within 30 days after such improvements are made or licensed..
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4. Reservation of Rights. All rights not expressly granted to a
party hereunder are reserved. Nothing in this Agreement shall require either
party to pursue any new patent or to take any action with respect to any
existing patent or patent application, except as expressly set forth in this
Agreement. Nothing in this Agreement shall be construed as granting either party
a license to use the other's tradenames, trademarks, servicemarks or other
branding.
4A. Termination of Rights with Respect to GRI Improvements. In the
event that either party's Research Agreement or the Consultancy Agreement
between such party and the University of Glasgow terminates or ceases to be in
effect, the parties will cease to share, and the definition of Spacelabs
Licensed Technology and Xxxxxxx Licensed Technology will be amended so that they
no longer include, any improvements made by or licensed to either party relating
to the University of Glasgow GRI algorithm made or licensed after the date on
which such Research Agreement or Consultancy Agreement was terminated.
4B. Termination of Certain Rights in Pyramis Technology. In the
event that Spacelabs or any Affiliate of Spacelabs consummates any merger, sale
of assets or sale of shares with the General Electric Company or any Affiliate
of the General Electric Company or any transaction or series of transactions
pursuant to which the General Electric Company or any Affiliate of the General
Electric Company acquires ownership or control of Spacelabs or any Affiliate of
Spacelabs, then clause (a) of the above definition of "XXXXXXX LICENSED
TECHNOLOGY" shall be revised as follows: (a) Xxxxxxx'x proprietary `Pyramis(R)'
ECG Management System technology, including all designs, concepts, software,
specifications, documentation and related know-how to the extent necessary to
maintain the interface described in Schedule D, as such technology exists on the
Effective Date, but excluding any licensed third party technologies that may not
be freely distributed. In such event, Spacelabs shall return to Xxxxxxx or
destroy any and all information, documentation and other materials (including
all reports, validation test results, source code, requirements documents,
design specifications, design review notes, design notebooks, software
development and build notes, and the like) that contains, discloses,
incorporates or embodies Xxxxxxx'x proprietary `Pyramis(R)' ECG Management
System technology, including all designs, concepts, software, specifications,
documentation and related know-how other than information, documentation and
materials that are required to exercise the license to maintain the interface
described in Schedule D. Upon request, Spacelabs will certify that all
information, documentation and materials have been delivered and no such
information, documentation or materials remain in Spacelabs possession or
control.
None of Spacelabs, any Affiliate of Spacelabs or any permitted
successor or assign of Spacelabs will commence any claim, suit, action or
proceeding of any kind against Xxxxxxx, its Affiliates or permitted successors
and assigns based on or relating to any products, information, technology,
inventions, know-how, designs, works of authorship, computer code, algorithms,
methodologies, and other items or materials that are developed, authored,
created, invented, written, reduced to practice, or otherwise made at any time
prior to July 1, 2004 using, based on or incorporating any Xxxxxxx Licensed
Technology. Spacelabs further covenants and agrees that until July 1, 2004
Spacelabs will not disclose or sublicense any `Pyramis(R)' ECG Management System
technology, including all designs, concepts, software, specifications,
documentation and
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related know-how and all related information, documentation or materials
(including all reports, validation test results, source code, requirements
documents, design specifications, design review notes, design notebooks,
software development and build notes and the like) delivered or possessed by
Spacelabs, and after July 1, 2004 Spacelabs will only do so to the extent
permitted in Section 3 above.
5. Trade Secrets and Know-How. To the extent that either party
discloses to the other any trade secrets, know-how or other proprietary,
non-public information in connection with the licenses granted by this
Agreement, each party acknowledges and agrees that such information constitutes
valuable trade secrets of the disclosing party, and that it shall use such
information solely for the purposes permitted herein, and shall not disclose
such trade secrets, know-how or other proprietary, non-public information to any
third party, except where appropriate steps have been taken to ensure that the
confidentiality of such information shall be preserved. Notwithstanding the
foregoing, this paragraph shall not apply to any information which (a) was known
to the recipient prior to disclosure by the disclosing party (without limiting
the protections under that certain Non-solicitation and Non-disclosure Agreement
dated of even date herewith afforded to any proprietary, non-public information
of either party that are known by the other party as of the date hereof), (b)
was obtained by the recipient from a separate source not under any obligation to
keep such information confidential, (c) was independently developed by the
recipient, or (d) is or becomes publicly available through no fault or action of
the recipient.
6. Maintenance of Interface. For so long as Spacelabs sells ECG
monitoring products that provide output designed to work with the interface
specified on Schedule D, Xxxxxxx shall maintain the current interface (as
specified on Schedule D) between the Pyramis(R) ECG Management System and
Spacelabs ECG monitor products, and shall incorporate such interface in all
future versions of the Pyramis(R) ECG Management System and any other ECG data
management products it may develop in the future. In addition, Xxxxxxx shall
provide to Spacelabs all documents, specifications and other information and
materials that are in Xxxxxxx'x possession and that Spacelabs reasonably
requires in order to implement such interface into its monitoring products and
to obtain any regulatory approvals with respect to such interface. In order to
facilitate the parties' maintenance of the interface in light of future product
development activities, Spacelabs shall promptly provide to Xxxxxxx free of any
additional charge any and all information, documentation, specifications,
equipment, machinery, software, consultation and cooperation that Xxxxxxx may
reasonably require in order to perform its obligations hereunder. In addition,
Xxxxxxx shall sell to Spacelabs a reasonable amount of its products as
reasonably required by Spacelabs for testing and validation of the interface
described above at a cost equal to one hundred twenty percent (120%) of the full
manufacturing cost of such products, upon the condition that such products shall
be for internal development and validation use only and not for resale. The
parties acknowledge that the aforementioned sale and use of such products shall
not convey any ownership of or license to any intellectual property rights of
the other party except as expressly granted hereunder. For avoidance of doubt,
Spacelabs cannot require Xxxxxxx and Xxxxxxx has the right but not the
obligation to change the interface to accommodate different outputs from
Spacelabs. In the event that Xxxxxxx determines that the maintenance of the
interface pursuant to this Agreement would be discontinued but for the
obligations herein, Xxxxxxx shall notify Spacelabs. If after receipt of such
notice, Spacelabs undertakes to pay or
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EXHIBIT A
reimburse any royalties or other fees payable to third parties for any
proprietary technology or other intellectual property or licenses used in
connection with such interface as it exists on the Effective Date that are
payable by Xxxxxxx, then Xxxxxxx shall continue to perform its obligations under
this paragraph 6; otherwise, Xxxxxxx may terminate its obligations under this
paragraph 6.
7. Consultation. Each party shall, for a period of one year
following the Effective Date, and for additional one year periods thereafter
unless either party notifies the other within 90 days prior to the end of any
such period that it does not wish to renew such commitment, it shall make up to
80 hours per month of consultant time available to the other, at the rate of USD
$[*] per hour, to assist with the implementation of the licensed technology.
C. REPRESENTATIONS AND WARRANTIES
1. Limited Warranty. Spacelabs hereby represents and warrants
that (a) it has the power and authority to enter into this Agreement, (b) it is
the owner of, or has sufficient rights in, the technology in which it grants a
license under this Agreement to grant such license, and (c) the technology in
which it is granting a license under this Agreement shall, on the date
delivered, be free from any computer virus. Xxxxxxx hereby represents and
warrants that, with respect to any technology created by Xxxxxxx after the
Effective Date and licensed to SpaceLabs hereunder, (i) Xxxxxxx is the owner of,
or has sufficient rights in, such technology to grant the license under this
Agreement, and (ii) such technology shall, on the date delivered, be free from
any computer virus.
2. NO OTHER WARRANTY. TO THE EXTENT PERMITTED BY LAW, EACH PARTY
DISCLAIMS AND EXCLUDES ALL REPRESENTATIONS, WARRANTIES AND CONDITIONS, WHETHER
EXPRESS, IMPLIED OR STATUTORY, OTHER THAN THOSE EXPRESSLY SET FORTH IN THIS
SECTION C, INCLUDING BUT NOT LIMITED TO WARRANTIES OR CONDITIONS OF TITLE,
NON-INFRINGEMENT, VALIDITY OR ENFORCEABILITY OF PATENTS, SATISFACTORY QUALITY,
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
D. INDEMNIFICATION
Spacelabs shall indemnify, defend and hold Xxxxxxx and its Affiliates,
successors, assigns, officers, directors, employees, agents and representatives
harmless from any and all costs, damages, expenses and claims arising out of any
claims made by any third parties ("CLAIMS") resulting from (a) Spacelab's use of
any Xxxxxxx Licensed Technology (other than claims that use of any portion of
the Xxxxxxx Licensed Technology that consists of improvements made by or
licensed to Xxxxxxx relating to the University of Glasgow GRI algorithm and that
was not modified by Spacelabs infringes a third party's intellectual property
rights), including products liability or design defect claims, (b) Spacelab's
modification of the Xxxxxxx Licensed Technology', including its use of such
modification, (c) any breach by Spacelabs of its representations and warranties
provided hereunder, or (d) any failure of Spacelabs to comply with any laws or
regulations relating to its use of the Xxxxxxx Licensed Technology', including
any export control laws. In addition, Spacelabs shall indemnify, defend and hold
Xxxxxxx and its Affiliates, successors, assigns, officers, directors, employees,
agents and representatives harmless from any
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and all Claims that Xxxxxxx'x use of the Spacelabs Licensed Technology
infringes, violates or misappropriates a third party's intellectual property
rights in existence at the time of the Effective Date (but only to the extent
that such Claim is not based on any modification made by Xxxxxxx).
Xxxxxxx shall indemnify, defend and hold Spacelabs and its Affiliates,
successors, assigns, officers, directors, employees, agents and representatives
harmless from any and all Claims resulting from the following (a) Xxxxxxx'x use
of any Spacelabs Licensed Technology (other than claims that use of any portion
of the Spacelabs Licensed Technology that was not modified by Xxxxxxx infringes
a third party's intellectual property rights), including products liability or
design defect claims, (b) Xxxxxxx'x modification of the Spacelabs Licensed
Technology, including its use of such modification, (c) any breach by Xxxxxxx of
its representations and warranties provided hereunder, or (d) any failure of
Xxxxxxx to comply with any laws or regulations relating to its use of the
Spacelabs Licensed Technology, including any export control laws. In addition,
Xxxxxxx shall indemnify, defend and hold Spacelabs and its Affiliates,
successors, assigns, officers, directors, employees, agents and representatives
harmless from any and all Claims that Spacelab's use of the portion of the
Xxxxxxx Licensed Technology that consists of improvements made by Xxxxxxx
relating to the University of Glasgow GRI algorithm infringes, violates or
misappropriates a third party's intellectual property rights in existence at the
time of the Effective Date (but only to the extent that such Claim is not based
on any modification made by Spacelabs).
The party seeking indemnification under this Section D (the
"INDEMNIFIED PARTY") shall (a) give the other party (the "INDEMNIFYING PARTY")
prompt written notice of any Claim for which indemnification is sought
hereunder, (b) not settle or compromise such Claim without the prior written
consent of the Indemnifying Party, (c) permit the Indemnifying Party to control
the defense and settlement of such Claim, and (d) comply with any settlement,
judgment or court order made in connection with such Claim. The Indemnifying
Party shall not, without the prior written consent of the Indemnified Party,
enter into any settlement or consent to the entry of any judgment with respect
to any such Claim (x) that contains any admission by or finding against the
Indemnified Party, (y) that includes any relief to the claimant other than
monetary relief to be paid in full by the Indemnifying Party, or (z) that does
not include as an unconditional term thereof the giving by the claimant to the
Indemnified Party a release of all liability in respect of such Claim. The
Indemnified Party shall have the right to participate in the defense and
settlement of any Claim with an attorney of its own choice at its own expense.
In the event the Claim is for infringement, violation, or
misappropriation of a third party's intellectual property rights and is covered
under this Section D, the Indemnifying Party shall have the option at its own
expense to procure for the Indemnified Party the right to continue to exercise
the rights licensed hereunder, or to replace the relevant material with
non-infringing material, or modify the relevant material so that it no longer
infringes, violates or misappropriates the applicable third party intellectual
property rights.
E. LIMITATION OF LIABILITY
EXCEPT FOR THE OBLIGATIONS SET FORTH IN PARAGRAPH B.5 AND IN SECTION D,
UNDER NO CIRCUMSTANCES SHALL EITHER PARTY BE ENTITLED TO
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ANY LOST PROFITS, OR ANY CONSEQUENTIAL, INCIDENTAL, INDIRECT, SPECIAL OR
PUNITIVE DAMAGES OF ANY NATURE WHATSOEVER, INCLUDING, WITHOUT LIMITATION, ANY
DAMAGES ARISING OUT OF ANY MALFUNCTIONS, DELAYS, LOSS OF DATA, INTERRUPTION OF
SERVICE OR LOSS OF BUSINESS OR ANTICIPATORY PROFITS, EVEN IF THE OTHER PARTY HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
F. MARKING AND ENFORCEMENT OF PATENTS
1. Marking of Patents. To the extent directed by the holder of
the patent, the other party shall ensure that each product manufactured,
pursuant to the granted licenses and technology rights, contain a plate or other
marking visible to a user that indicates the numbers of all patents under which
the product has been manufactured, in conformity with the United States statutes
relating to the marking of patented devices, and in compliance with the laws of
any other countries that may be applicable thereto, and as otherwise reasonably
instructed by the other party.
2. Enforcement of Patents. Each party shall immediately notify
the other in writing if it becomes aware of any infringement or suspected
infringement by any third party of the technology that has been licensed to it
under this Agreement. In the case of third party infringement or suspected
infringement of a party's patent, the patent owner shall have sole discretion
whether to pursue such infringer. If the owner notifies the other party that it
chooses not to pursue such infringer, such other party may, at its own expense,
pursue such infringer, and the owner shall reasonably cooperate with such other
party; in such event, any damages award shall be allocable as follows: (a)
first, to cover the parties' costs in connection with the enforcement action,
(b) second, any portion of the damages award arising out of infringement that
occurred prior to the Effective Date shall be allocable to the patent owner, (c)
third, the damages award shall be allocable to the respective parties to
compensate them for actual damages incurred and proven at trial (or if the
enforcement action was settled, then in accordance with the terms of such
settlement agreement), and (d) fourth, any portion of the award not allocable to
costs or to compensate for actual damages suffered shall be divided ratably
based on the allocation described in (c) above. In the case one party does
initiate a legal action against an infringer, the other party may, at its own
expense, join in such action.
G. NOTICES
All notices under this Agreement are to be delivered by (i) depositing
the notice in the mail, using registered mail, return receipt requested,
addressed to the address below or to any other address as the party may
designate by providing notice, (ii) telecopying the notice by using the
telephone number set forth below or any other telephone number as the party may
designate by providing notice, (iii) overnight delivery service addressed to the
address below or to any other address as the party may designate by providing
notice, or (iv) hand delivery to the individual designated below or to any other
individual as the party may designate by providing notice. The notice shall be
deemed delivered (i) if by registered mail, four days after the notice's deposit
in the
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mail, (ii) if by telecopy, on the date the notice is delivered, (iii) if by
overnight delivery service, on the day of delivery, and (iv) if by hand
delivery, on the date of hand delivery.
If to Spacelabs:
Spacelabs Medical, Inc
00000 X.X. 00xx Xxxxxx
X.X. Xxx 00000
Xxxxxxx, XX 98073-9713
Attention: Legal Department
Facsimile: (000) 000-0000
If to Xxxxxxx:
Xxxxxxx Cardiology Systems, Inc.
0000 Xxxxx Xxxxx Xxxxxxx
Xxxxxxx, XX 00000
Attention: Chief Financial Officer
Facsimile: (000) 000-0000
H. REMEDIES FOR BREACH OF AGREEMENT
In the event that either party fails to perform any material obligation
under this Agreement, or breaches any representation or warranty contained
herein, the defaulting party shall, cure such breach within 30 days of its
receipt of written notice of such breach (the "CURE PERIOD"). In the event such
party fails to cure such breach within the Cure Period or denies that any breach
has occurred, the parties shall negotiate in good faith the remedy that shall
apply as a result of such breach or alleged breach. In the event the parties are
unable to mutually agree upon the proper remedy or resolution within 30 days of
the expiration of the Cure Period, the matter shall be submitted to a steering
committee comprising the Chief Executive Officer of each party (the "STEERING
COMMITTEE"). The Steering Committee shall meet, at a location to be determined
by the party alleging that the other party has breached (the "NON-BREACHING
PARTY"), to review the issues and determine the appropriate remedy or
resolution. If the Steering Committee is unable to reach agreement upon the
appropriate remedy or resolution within 30 days of the matter being referred to
the Steering Committee, the matter shall, upon the request of either party, be
resolved by arbitration administered by JAMS in accordance with JAMS's
Comprehensive Arbitration Rules and Procedures (the "Rules"), in Seattle,
Washington, by three arbitrators selected in accordance with such Rules.
Arbitration shall be conducted in the English language. The arbitrator shall be
empowered to determine the appropriate remedy, including without limitation the
award of monetary damages and the award of legal fees and costs to the
prevailing party. The award of the arbitrator may be entered in any court having
jurisdiction provided that it is accompanied by written findings of fact and
conclusions of law. Nothing in this provision shall limit a party's right to
seek a restraining order, temporary or permanent injunction or other equitable
relief in any court having jurisdiction in the event of a breach or threatened
breach of Section B.5.
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[*] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
EXHIBIT A
I. GENERAL PROVISIONS
1. Complete Agreement. This Agreement is the complete and
exclusive statement of the agreement between the parties, which supersedes and
merges all prior proposals, understandings and all other agreements, oral or
written, between the parties relating to this Agreement.
2. Amendment. This Agreement may not be modified, altered or
amended except by written instrument duly executed by both parties.
3. Waiver. The waiver or failure of either party to exercise in
any respect any right provided for in this Agreement shall not be deemed a
waiver of any further right under this Agreement.
4. Assignment. Neither party may assign or otherwise transfer
this Agreement without the prior written consent of the other party, except that
both parties may assign this Agreement without the necessity of first obtaining
consent to any entity that purchases substantially all of the assets of such
party or succeeds to and carries on the business of such party (whether by
merger, other reorganization, transfer of ownership or control or otherwise)
5. Severability. If any provision of this Agreement is invalid,
illegal or unenforceable under any applicable statute or rule of law, it is to
that extent to be deemed omitted. The remainder of the Agreement shall be valid
and enforceable to the maximum extent possible.
6. Governing Law. This Agreement and performance hereunder shall
be governed by the laws of the State of Washington, excluding its choice of law
principles to the contrary. Subject to Section H, the parties hereto irrevocably
submit in any suit, action or proceeding arising out of or related to this
Agreement or any of the transactions contemplated hereby to the jurisdiction of
the federal and state courts sitting in King County, Washington and waive any
and all objections to jurisdiction and forum non conveniens. Nothing in this
provision shall limit a party's right to seek a restraining order, temporary or
permanent injunction or other equitable relief in any court having jurisdiction
in the event of a breach or threatened breach of Section B.5.
[REMAINDER OF PAGE INTENTIONALLY BLANK; SIGNATURE PAGE FOLLOWS]
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[*] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
EXHIBIT A
DATED AND EXECUTED on December 31, 2002 by duly authorized officers of
the undersiged parties intending to be bound hereby.
SPACELABS:
SPACELABS MEDICAL, INC.
___________________________________
By: ____________________________
Its: ____________________________
XXXXXXX:
SPACELABS XXXXXXX, INC.
__________________________________
By: ___________________________
Its: ___________________________
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[*] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
EXHIBIT A
List of Schedules Omitted from Technology Cross-License Agreement
Schedule
--------
Schedule A Description of Cosmos / Polaris ECG Technology
Schedule B Description of Spacelabs Licensed Technology
Schedule C Description of Databases
Schedule D Description of Current Interface Protocol
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