Exhibit 10.10
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is entered into as of the 6th day
of July, 2001, (the "Effective Date") by and between CS Medical Technologies,
LLC, a Delaware limited liability company ("CS Medical") and Pro Uro Care Inc.,
a Minnesota corporation ("Licensee").
RECITALS
WHEREAS, CS Medical owns or has licensed the Licensed Technology
(defined below); and
WHEREAS, the parties desire for Licensee to be granted an exclusive
license to the Licensed Technology in the defined field of use, subject to the
terms and conditions of this Agreement.
NOW THEREFORE, in consideration of the foregoing and the covenants and
premises contained in this Agreement, the parties agree as follows:
ARTICLE 1
DEFINITIONS
As used herein, capitalized terms will have the meanings set forth
below.
1.1 "Affiliate" shall mean any entity that controls, is controlled by
or is under common control with a party hereto. "Control" shall mean the
possession of the power to direct or cause the direction of the management and
policies of such entity, whether through the ownership of voting securities, by
contract or otherwise.
1.2 "Confidential Information" shall mean any confidential or
proprietary information embodied in the Devices or Licensed Technology, and any
information which relates to any research project, work in process, future
development, scientific, engineering, manufacturing, marketing, business plan,
financial or personnel matter relating to either party, its present or future
products, sales, suppliers, customers, employees, investors or business, whether
in oral, written, graphic or electronic form.
1.3 "Devices" shall mean any composition of matter, material or product
that is either covered by the Licensed Patents or the Licensed Know-how, or
whose manufacture, use or sale would constitute, but for the license granted to
Licensee pursuant to this agreement, an infringement of any pending or issued
claim within the Patent Rights.
1.4 "Field of Use" shall mean the treatment of (a) benign prostatic
hyperplasia; (b) prostatitis; (c) prostate cancer; or (d) any other conditions
of urologic disorder which may be diagnosed, imaged or treated using a
catheter-based microwave technology or sensor imaging systems.
1.5 "Licensed Know-how" means all techniques, inventions, practices,
methods, knowledge, skill, experience, bench testing information, and all other
information and data relating to the Licensed Patents or the Field of Use, and
which are now or in the future owned or licensed, with a right of sublicense, by
CS Medical or its Affiliates.
1.6 "Licensed Patents" means (a) the patents and patent applications
listed on Exhibit A hereto, (b) any future patents and patent applications
pertaining to or that have application in the Field of Use, and which are owned
or licensed, with a right of sublicense, by CS Medical or its Affiliates, and
(c) all foreign counterparts, all substitutions, extensions, reissues, renewals,
continuations and continuations in part relating to any Licensed Patents and
their foreign counterparts, and which are owned or licensed, with a right of
sublicense, by CS Medical or its Affiliates. Exhibit A shall be updated by the
parties as needed from time to time during the term of this Agreement.
1.7 "Licensed Technology" means (a) the inventions, discoveries,
processes, devices and/or claims covered under the Licensed Patents; and (b) the
Licensed Know-how.
1.8 "Net Sales" means all revenues recognized in accordance with
generally accepted accounting principles relating to the sale of Devices by or
for Licensee, less transportation charges, discounts actually taken, credits
allowed for defective or returned goods, and other allowances (actually paid or
allowed, including but not limited to, prompt payment and volume discounts,
charge backs from wholesalers and other allowances granted to the end commercial
customer of the Devices, whether in cash or trade), insurance and sales and
other taxes based on sales prices when included in gross sales, but not
including taxes assessed on income derived from such sales.
ARTICLE 2
GRANT OF LICENSE AND OTHER OBLIGATIONS
2.1 License Grant. Subject to the terms and conditions of this
Agreement, CS Medical hereby grants to Licensee an exclusive, worldwide,
royalty-bearing, limited license under the Licensed Technology to make, have
made, import, use, sell and have sold the Devices solely within the Field of
Use.
2.2 Degree of Exclusivity. Except as otherwise provided herein, the
license granted in Section 2.1 shall be exclusive for the life of the Agreement.
As used herein, "exclusive" shall mean that CS Medical may not grant any other
license to any other third party of the Licensed Technology, in whole or in
part, and may not itself practice any claim encompassed within the foregoing on
a commercial basis within the Field of Use. Notwithstanding the foregoing, CS
Medical and its Affiliates may use any of the Licensed Technology solely and
exclusively for their own internal and noncommercial research and development
purposes within the Field of Use, and CS Medical and other third parties reserve
the right to make, to have made, use or sell, directly or through others, for
any products embodying or otherwise using the Licensed Technology for
applications outside the Field of Use.
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2.3 No Trademark License. Subject to Section 5.4 below with respect to
patent markings, nothing contained in this Agreement shall be construed as
conferring any right to Licensee to use in its advertising, publicity, or other
promotional activities any name, trade name, trademark, or other designation of
CS Medical or its licensors.
2.4 Sublicense. Licensee may grant to third parties a sublicense to
manufacture, use, import or sell Devices developed by Licensee, provided that a
least a majority of the members of Licensees Board of Directors approves such
sublicense. Licensee may grant to third parties a sublicense to manufacture,
use, import or sell Devices not developed by Licensee, provided that (a) CS
Medical preapproves in writing such sublicense, and (b) CS Medical and Licensee
agree in writing upon the royalties payable to CS Medical as a result of such
sublicense.
2.5 Services of Xxx Xxxxxxxx. As of the Effective Date, an Affiliate of
CS Medical employs Xxx Xxxxxxxx. Provided that Xxx Xxxxxxxx continues to be
employed by CS Medical or an Affiliate, CS Medical agrees that it will make the
services of Xxx Xxxxxxxx available to Licensee on a part-time basis
(approximately 10%) pursuant to a separate agreement, as either a consultant or
an employee, with Licensee to be responsible for paying the amounts (e.g.,
salary and benefits) earned by Xx. Xxxxxxxx through such arrangement, and
provided that Xx. Xxxxxxxx consents to such arrangement.
2.6 Certain Items. CS Medical will make available to Licensee for its
use (or benefit as described below) certain leased equipment and a microwave
generator prototype, which are relevant to the Licensed Technology in the Field
of Use. Licensee agrees to pay to CS Medical a pro rata share of one-third (33%)
of the monthly lease expenses for such leased equipment promptly when invoiced,
and acknowledges that such leased equipment will be (a) used by Xxx Xxxxxxxx in
the performance of the services for Licensee as described in Section 2.5, (b)
continue to also be used by CS Medical and its Affiliates in their business, and
(c) will remain at the physical location(s) selected by CS Medical. As of the
Effective Date, the microwave generator prototype (a) will be located at CS
Medical's facilities but may be relocated at Licensee's request and expense at a
later time, (b) may be used by Licensee only in furtherance of the development
of the Devices as contemplated hereunder, (c) will be maintained by Licensee at
its expense when in its possession or control, and (d) will be promptly returned
to CS Medical upon any termination of this Agreement. As between the parties, CS
Medical will retain all right, title and interest in and to the leased equipment
and microwave generator prototype, and Licensee shall only have the limited
right to use such items as described herein.
2.7 Licensed Know-how. CS Medical will provide or make available all
Licensed Know-how to Licensee in a timely manner.
ARTICLE 3
OWNERSHIP
Licensee acknowledges and agrees that, as between CS Medical and
Licensee, CS Medical shall retain all rights to the Licensed Technology, and
Licensee shall have no rights in the Licensed Technology other than those rights
expressly granted to Licensee under this Agreement.
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ARTICLE 4
CONSIDERATION
4.1 Calculation and Payment of Royalties. Beginning on the Effective
Date, Licensee shall pay to CS Medical an ongoing royalty pursuant to this
Section 4.1.
(a) Calculation of Royalties. Within thirty (30) days after
the end of each calendar quarter, Licensee shall pay to CS Medical a royalty of
one-half percent (0.5%) of the amount by which Net Sales of all Devices sold or
distributed during such calendar quarter exceeds $500,000.
(b) Payment of Royalties. At the same time that it makes
payments of royalties due with respect to a calendar quarter, Licensee shall
deliver to CS Medical a true and complete accounting of sales of Devices and
receipts from those sales during the quarter, with a separate accounting of
sales and receipts by country and a calculation of the royalty payment due CS
Medical for such calendar quarter. If no sales of Devices were made in such
quarter, then Licensee's statement shall be a statement to such effect. Licensee
hereby covenants that if it desires to sell, lease or otherwise place any
Devices in exchange for consideration in a manner that makes it impractical to
calculate the royalty due, it will not do so without first devising a mechanism
for the calculation of royalties thereon and obtaining CS Medical's prior
written consent for such mechanism.
4.2 Foreign Payments. In transactions giving rise to an obligation to
make payment hereunder with respect to which Licensee receives payment in a
currency other than U.S. Dollars, all payments required to be made by Licensee
under Section 4.1 shall be converted, prior to payment, into U.S. Dollars at the
applicable rate of exchange of Citibank, N.A., in New York, New York, on the
last day of the calendar quarter in which such transaction occurred. If Licensee
is prevented from making any payment under this Agreement by virtue of the laws
of the country from which the payment is to be made, Licensee may deposit the
amount that has accrued to CS Medical's account in the currency of such country
in a bank in such country that is acceptable to CS Medical.
4.3 Overdue Payments. Payments due to CS Medical hereunder shall, if
not paid when due under the terms of this Agreement, bear simple interest at the
lesser of 1.5% per month or the highest rate permitted by law, calculated on the
basis of a 360-day year for the number of days actually elapsed, beginning on
the due date and ending on the day prior to the day on which payment is made in
full. Interest accruing under this Section shall be due to CS Medical on demand.
The accrual or receipt by CS Medical of interest under this Section shall not
constitute a waiver by CS Medical of any right it may otherwise have to declare
a default under this Agreement or to terminate this Agreement.
ARTICLE 5
OTHER OBLIGATIONS
5.1 Licensee Responsibility. Licensee shall diligently proceed with the
development, manufacture, and sale of Devices within the Field of Use and shall
earnestly and diligently endeavor to market the same within a reasonable time
after execution of this Agreement and in quantities sufficient to meet the
market demands therefor.
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5.2 Government Approvals. As between the parties, Licensee shall be
solely obligated to obtain all necessary governmental approvals for the
manufacture, use, and sale of Devices within the Field of Use in the United
States or any other countries.
5.3 Progress Reports. Beginning at the end of the first anniversary of
the Effective Date and annually thereafter, Licensee shall submit to CS Medical
a summary progress report covering Licensee's activities in the preceding year
related to the development and testing of all Devices within the Field of Use
and Licensee's progress, if any, in obtaining governmental approvals necessary
for marketing such products. * Such progress reports shall include, but not be
limited to, a summary of the following topics: research and development work
completed; key scientific discoveries; work in progress; current schedule of
anticipated events or milestones; and market plans for introduction of new or
additional Devices.
5.4 Patent Marking. Licensee shall xxxx all Devices made, used, or sold
under the terms of this Agreement, or their containers, in accordance with 35
U.S.C. ss. 287(a) or any other successor statute in the United States and the
applicable patent marking laws of any other country. Upon CS Medical' written
request, Licensee shall furnish reasonable and representative samples of the
Devices to demonstrate compliance with this Section.
5.5 Insurance. Licensee, at its sole cost and expense, shall insure its
activities in connection with the exercise of its license under this Agreement
in an appropriate amount at all times. Without limiting the foregoing, Licensee
shall obtain, keep in force, and maintain, at a minimum, Comprehensive or
Commercial Form General Liability Insurance (contractual liability included) or
an equivalent program of self-insurance with appropriate limits, which limits
will increase as needed depending on the activities of Licensee (i.e., more
coverage once human testing begins).
ARTICLE 6
CONFIDENTIALITY
6.1 Confidentiality. During the term of this Agreement and thereafter,
each party hereto will maintain in confidence all Confidential Information
disclosed by the other party hereto. Neither party will use, disclose or grant
use of such Confidential Information except as expressly authorized by this
Agreement. To the extent that disclosure is authorized by this Agreement, the
disclosing party will obtain prior agreement from its employees, agents or
consultants to whom disclosure is to be made to hold in confidence and not make
use of such information for any purpose other than those permitted by this
Agreement. Each party will use at least the same standard of care as it uses to
protect its own Confidential Information to ensure that such employees, agents
or consultants do not disclose or make any unauthorized use of such Confidential
Information. Each party will promptly notify the other upon discovery of any
unauthorized use or disclosure of the Confidential Information.
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6.2 Exceptions. The obligations of confidentiality contained in Section
6.1 will not apply to the extent that it can be established by the receiving
party by competent written proof that such Confidential Information:
(a) was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure by the other party;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the other party;
(c) became generally available to the public or otherwise part of the
public domain after its disclosure and other than through any act or omission of
the receiving party in breach of this Agreement;
(d) was disclosed to the receiving party, other than under an
obligation of confidentiality, by a third party who had no obligation to the
other party not to disclose such information to others.
The parties agree that the material financial terms of this Agreement will also
be considered Confidential Information of both parties.
6.3 Authorized Disclosure. Each party may disclose the Confidential
Information to the extent such disclosure is reasonably necessary in complying
with applicable governmental regulations, provided that if such party is
required to make any such disclosure of the Confidential Information it will to
the extent practicable give reasonable advance notice to the other party of such
disclosure requirement so that confidential treatment of the information
required to be disclosed may be secured.
ARTICLE 7
TERM; TERMINATION
7.1 Term. This Agreement will commence on the Effective Date and,
unless sooner terminated as provided hereunder, will terminate upon the
expiration of the last to expire patent included in the Licensed Technology.
7.2 Termination by CS Medical. CS Medical may terminate this Agreement
in accordance with the following:
(a) Failure to Make Timely Payment. CS Medical may terminate
this Agreement upon ten (10) days written notice if Licensee fails to timely
make any payment required by this Agreement and fails to cure the nonpayment
within ten (10) days of written notice thereof from Licensee.
(b) Failure to Capitalize. CS Medical may terminate this
Agreement upon thirty (30) days written notice to Licensee, unless on or before
December 31, 2002, CS Medical has received a certificate signed by at least a
majority of the Board of Directors of Licensee indicating that Licensee has
obtained at least $1,000,000.00 in new capital investment on or before the date
of such certificate. In this connection, it is understood that Licensee may
obtain this capital investment either through direct investments by investors,
or through a merger or other form of acquisition or business combination, which
results in at least $1,000,000.00 being available for development and other
activities undertaken in connection with this Agreement.
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7.3 Termination by Either Party. This Agreement may be terminated by
either party upon written notice if the other party breaches a material
provision of this Agreement and does not cure such breach within sixty (60) days
of written notice thereof.
7.4 Effect of Termination.
(a) Termination of License. Upon termination or expiration of
this Agreement for any reason, the license granted to Licensee pursuant to
Section 2.1 shall automatically terminate. Licensee shall immediately cease all
use of the Licensed Technology, including all Licensed Technology included in
the Devices, and shall provide a written account to CS Medical of the following
within fifteen (15) days of termination:
(1) All development in progress; sales of Devices
made but not shipped; inventory of Devices on hand as
well as work in process;
(2) Royalties due but not paid up to date of
termination.
(b) Return of Confidential Information. Within thirty (30)
days of termination of this Agreement for any reason, both parties shall return
or destroy all copies of the other party's Confidential Information and shall
provide written certification of such destruction upon request of the other
party.
(c) Royalty Obligation. Licensee acknowledges that the
termination of this Agreement by either party for any reason shall not absolve
Licensee of its payment and other obligations under Section 4.1(b).
(d) - Survival. In the event of termination of this Agreement,
Articles 3, 4, 6, 8, 9,10,11 and 12 shall survive.
ARTICLE 8
REPRESENTATIONS AND WARRANTIES
8.1 Representations and Warranties. Each party hereby represents and
warrants:
(a) Corporate Power. Such party is duly organized and validly existing
under the laws of the state of its incorporation and has full corporate power
and authority to enter into this Agreement and to carry out the provisions
hereof.
(b) Due Authorization. Such party is duly authorized to execute and
deliver this Agreement and to perform its obligations hereunder.
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(c) Binding Agreement. This Agreement is a legal and valid obligation
binding upon it and enforceable in accordance with its terms. The execution,
delivery and performance of this Agreement by such party does not conflict with
any agreement, instrument or understanding, oral or written, to which it is a
party or by which it may be bound, nor violate any law or regulation of any
court, governmental body or administrative or other agency having jurisdiction
over it.
8.2 Representations and Warranties of Licensee. Licensee hereby
represents and warrants to CS Medical the following:
(a) Diligent Development and Commercialization. Upon the
obtaining of the capital referred to in Section 7.2(b) hereof, Licensee and its
permitted sublicensees will be diligent in development and commercializing the
Devices, which shall include, without limitation, the continued development of
such Devices, making the necessary filings and applications to appropriate
governmental authorities and undertaking marketing and sales activities.
(b) Performance; Noninfringement. Licensee hereby represents
and warrants to CS Medical that it will perform its obligations hereunder in a
lawful, businesslike and professional manner and that, to the knowledge of
Licensee, the Devices do not infringe on any patent, copyright or trade secret
of a third party.
8.3 Representations and Warranties of CS Medical. CS Medical hereby
represents and warrants to Licensee the following:
(a) Right to Grant License. CS Medical, to its knowledge, has
all rights necessary to grant the license hereunder to Licensee.
(b) No Infringement Claims. As of the Effective Date, to the
knowledge of CS Medical there are no claims that the Licensed Technology
infringes any patent, copyright or trade secret of a third party.
(c) Licensed Technology. To the knowledge of CS Medical, the
Licensed Technology includes all inventions, discoveries, processes, devices
and/or claims covered under patents, and all know-how, which CS Medical or its
Affiliates own or have the right to sublicense for use in the Field of Use.
ARTICLE 9
INDEMNIFICATION, LIABILITY, INFRINGEMENT
9.1 Indemnification by Licensee. Licensee hereby agrees to indemnify,
defend and hold CS Medical harmless from any third party suit, claim or other
legal action ("Legal Action") that alleges the Devices, or any of them, infringe
any patent, copyright, trade secret, trademark or other proprietary right,
including any reasonable costs or legal fees thereby incurred by CS Medical,
except to the extent CS Medical is required to indemnify and hold harmless
Licensee pursuant to Section 9.2. Licensee shall also indemnify, defend and hold
CS Medical harmless against any Legal Action resulting from or arising out of
Licensee's performance under or breach of this Agreement, including, but not
limited to, any damages, losses or liabilities, whatsoever with respect to death
or injury to any person and damage to any property arising from the design,
possession, manufacture, use, sale, support, servicing or administration of the
Devices. CS Medical shall give Licensee written notice of any Legal Action
within twenty (20) days of CS Medical's first knowledge thereof.
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9.2 Indemnification by CS Medical. CS Medical hereby agrees to
indemnify, defend and hold Licensee harmless from any Legal Action arising out
of or resulting from CS Medical's breach of the warranties contained in Section
8.3, including any reasonable legal fees thereby incurred by Licensee, except to
the extent Licensee is required to indemnify CS Medical under Section 9.1.
Licensee shall give CS Medical written notice of any Legal Action within twenty
(20) days of Licensee's first knowledge thereof.
9.3 Suit for Infringement by Others. In the event Licensee becomes
aware of any actual or threatened infringement of all or any part of the
Licensed Technology including, without limitation, the patents contained
therein, Licensee shall promptly notify CS Medical and Licensee shall, in its
sole discretion, determine whether to commence infringement proceedings against
the alleged third party infringer. CS Medical shall cooperate in such
proceedings as reasonably requested by Licensee, and at Licensee's expense. If
Licensee does not bring such action within six (6) months from date on which
Licensee notified CS Medical of such infringement, CS Medical may bring such
action at its own expense. If CS Medical commences infringement proceedings,
Licensee shall cooperate in such proceedings, as reasonably requested by CS
Medical, and at CS Medical's expense. In any litigation undertaken by either
party against an accused infringer, neither party shall agree to any settlement,
court order or consent without the other party's written consent to the terms
thereof, which consent will not be unreasonably withheld. The party commencing
litigation against an alleged third party infringer shall be entitled to retain
any and all proceeds from such suit.
ARTICLE 10
LIMITATION OF LIABILITY AND DISCLAIMER OF WARRANTIES
10.1 Waiver of Consequential Damages. EXCEPT FOR ANY USE OF THE
LICENSED TECHNOLOGY BY LICENSEE OUTSIDE OF THE SCOPE OF THE LICENSE GRANTED IN
SECTION 2 HEREOF, IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR
ANY THIRD PARTY FOR ANY LOST PROFITS, LOST SAVINGS, OR OTHER INCIDENTAL,
SPECIAL, OR CONSEQUENTIAL DAMAGES OR FOR ANY CLAIM BY ANY OTHER PARTY, EVEN IF
SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, ARISING OUT OF
OR IN CONNECTION WITH THIS AGREEMENT, THE GRANTING OF THE LICENSE HEREUNDER, OR
THE DESIGN, MANUFACTURE, USE OR SALE OF THE LICENSED TECHNOLOGY OR DEVICES.
10.2 Disclaimer of Warranties. EXCEPT AS EXPRESSLY PROVIDED HEREIN, CS
MEDICAL IS PROVIDING THE LICENSED TECHNOLOGY AND ANY EQUIPMENT OR OTHER
MATERIALS PROVIDED HEREUNDER "AS IS," AND CS MEDICAL HEREBY EXPRESSLY DISCLAIMS
ANY AND ALL WARRANTIES OF ANY KIND OR NATURE, WHETHER EXPRESS OR IMPLIED,
INCLUDING, WITHOUT LIMITATION, THE WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE, RELATING TO THE LICENSED TECHNOLOGY AND ANY EQUIPMENT OR
OTHER MATERIALS PROVIDED HEREUNDER. Without limiting the generality of the
foregoing, CS Medical expressly does not warrant the accuracy, safety, or
usefulness for any purpose, of the Licensed Technology, any equipment or other
materials provided or made available by CS Medical hereunder or the Devices.
Nothing contained in this Agreement shall be construed as either a warranty or
representation by CS Medical as to the validity or scope of any patents
contained in the Licensed Technology, and CS Medical assumes no liability in
respect of any infringement of any patent or other right of third parties due to
the activities of Licensee or any sublicensee under this Agreement, subject to
Section 8.3(b) above.
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ARTICLE 11
RECORDS; AUDIT
11.1 Records Retention. Licensee will keep complete and accurate
records pertaining to the sale of the Devices. Such records will be maintained
for a three (3) year period following the year in which any such payments were
made hereunder.
11.2 Audit Request. CS Medical will have the right to engage, at its
own expense, an independent, certified public accountant reasonably acceptable
to Licensee, to examine Licensee's records from time to time as may be necessary
to determine, with respect to any calendar year, the correctness of any report
or payment made under this Agreement. If any such audit reveals an underpayment
of more than five percent (5%) of the correct amount of royalties due hereunder,
such audit will be at the expense of Licensee. If any audit conducted on behalf
of CS Medical shows that Licensee underpaid the royalties due to CS Medical
under the licenses herein as to the period subject to the audit, then Licensee
shall immediately pay to CS Medical any such deficiency with interest thereon at
an annual rate equal to 2% above the U.S. dollar reference rate ("prime rate")
charged from time to time by Citibank, N.A. from the date due until paid or at
such lower rate as shall be the maximum rate permitted by law.
11.3 Survival. This Article 11 will survive any termination of this
Agreement for a period of three (3) years.
ARTICLE 12
MISCELLANEOUS PROVISIONS
12.1 Entire Agreement. This Agreement (including the Exhibits,
schedules and other documents referred to herein) contains the entire
understanding between the parties with respect to the subject matter hereof and
supersedes any prior understandings, agreements or representations, written or
oral, relating to the subject matter hereof.
12.2 Counterparts. This Agreement may be executed in separate
counterparts, each of which will be an original and all of which taken together
shall constitute one and the same agreement, and any party hereto may execute
this Agreement by signing any such counterpart.
12.3 Severability. Whenever possible, each provision of the Agreement
will be interpreted in such manner as to be effective and valid under applicable
law, but if any provision of the Agreement is held to be invalid, illegal or
unenforceable under any applicable law or rule, the validity, legality and
enforceability of the other provision of this Agreement will not be affected or
impaired thereby.
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12.4 Successors and Assigns. This Agreement shall be binding upon and
inure to the benefit of the parties hereto and their respective heirs, personal
representatives and, to the extent permitted hereunder, successors and assigns.
12.5 Assignability. Neither this Agreement nor any right, remedy,
obligation or liability arising hereunder or by reason hereof shall be
assignable (including by operation of law) by Licensee without the prior consent
of at least a majority of the members of Licensee's Board of Directors. Any
assignment which is not in accordance with this Section will be void.
12.6 Modification, Amendment, Waiver or Termination. No provision of
the Agreement may be modified, amended waived or terminated except by an
instrument in writing signed by the parties to this agreement. No course of
dealing between the parties will modify, amend, waive or terminate any provision
of this Agreement or any rights or obligations of any party under or by reason
of this Agreement.
12.7 Notices. All notices, consents, requests, instructions, approvals
or other communications provided for herein shall be in writing and delivered by
personal delivery, overnight courier, mail, electronic facsimile or e-mail
addressed to the receiving party at the address set forth herein. All such
communications shall be effective when received.
If to CS MEDICAL:
Xx. Xxxxxxxxx Xxxxxxxxx
XX Medical Technologies, LLC
0000 Xxxx Xxxxxxx 00
Xxxxx 000
Xxxxxxxxx, XX 00000
With a copy to:
Xxxxxxxx X. Xxxxxxx
Xxxxxx & Xxxxxxx LLP
000 Xxxxx Xxxxx Xxxxxx
Xxxxxxxxxxx, XX 00000
If to Licensee, addressed to:
Xxxxx Xxxxxx
Solar Plastics, Inc.
000 00xx Xxxxxx X.X.
Xxxxxxxxxxx, XX 00000
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With a copy to:
Xxxx Xxxxxx
Xxxx Plant Xxxxx Xxxxx & Xxxxxxx P.A.
00 Xxxxx Xxxxx Xxxxxx
Xxxxx 0000
Xxxxxxxxxxx, XX 00000
Any party may change the address set forth above by notice to each other party
given as provided herein.
12.8 Headings. The headings contained in this Agreement are for
reference purposes only and shall not in any way affect the meaning or
interpretation of this Agreement.
12.9 Governing Law. This Agreement is made in accordance with and shall
be governed and construed in accordance with the laws of the State of Minnesota,
without regard to conflicts of laws rules.
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12.10 Third-Party Benefit. Nothing in this Agreement, express or
implied, is intended to confer upon any other person any rights, remedies,
obligations or liabilities of any nature whatsoever.
12.11 Jurisdiction and Venue. This Agreement may be enforced in any
federal court or state court sitting in Ramsey or Hennepin counties, Minnesota,
and each party consents to the jurisdiction and venue of any such court and
waives any argument that venue in such forum is not convenient. If any party
commences any action under any tort or contract theory arising directly or
indirectly from the relationship created by this Agreement in another
jurisdiction or venue, any other party to this Agreement shall have the option
of transferring the case to the above-described venue or jurisdiction or, if
such transfer cannot be accomplished, to have such case dismissed without
prejudice.
12.12 Waiver of Jury Trial. Each party irrevocably waives any and all
right to trial by jury in any legal proceeding arising out of or relating to
this agreement or the transactions contemplated hereby.
12.13 Remedies. The parties agree that money damages may not be an
adequate remedy for any breach of the provisions of this Agreement and that any
party may, in its discretion, apply to any court of law or equity of competent
jurisdiction for specific performance and injunctive relief in order to enforce
or prevent any violations this Agreement, any party against whom such proceeding
is brought hereby waives the claim or defense that such party has an adequate
remedy at law and agrees not to raise the defense that the other party has an
adequate remedy at law.
12.14 Expenses. Except as otherwise expressly provided for herein, each
party will pay its own expenses (including attorneys' and accountants' fees) in
connection with the negotiation of this Agreement, the performance of its
respective obligations hereunder and the consummation of the transactions
contemplated by this Agreement (whether consummated or not).
12.15 Advice of Counsel. Each party acknowledges that it has been
advised by counsel in the negotiation, execution and delivery of this Agreement.
12.16 Relationship of the Parties. Neither party is, nor will be deemed
to be, an agent or legal representative of the other party for any purpose.
Neither party will be entitled to enter into any contracts in the name of or on
behalf of the other party, and neither party will be entitled to pledge the
credit of the other party in any way or hold itself out as having authority to
do so. No party will incur any debts or make any commitments for the other.
12.17 Force Majeure. Neither party will be liable to the other for loss
or damages or will have any right to terminate this Agreement for any default or
delay (except any default or delay in the payment of money due hereunder)
attributable to any fire, floods, earthquake, embargo, war, act of war (whether
declared or not), insurrections, riots, civil commotions, strikes, lockouts or
other labor disturbances, acts of God or act, omission or delay in acting by any
governmental authority or the other party, if the party affected will give
prompt notice of any such cause to the other party. The party giving such notice
will thereupon be excused from such of its obligations hereunder as it is
thereby disabled from performing for so long as it is so disabled and for thirty
(30) days thereafter; provided, however, that such affected party commences and
continues to take reasonable and diligent actions to cure such cause.
14
12.18 Export Control. Licensee acknowledges that the Licensed
Technology and Devices may be subject to the export control laws and regulations
of the United States of America, and it hereby agrees to obey any and all such
laws and regulations. Licensee agrees not to take any actions that would cause
either party to violate the U.S. Foreign Corrupt Practices Act of 1977, as
amended.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement, including the Exhibits attached hereto and incorporated herein by
reference.
PRO URO CARE INC. CS MEDICAL TECHNOLOGIES, LLC
By: Xxxxxxx Xxxxxx By: Xxxx Xxxxxxxxx
--------------------- ---------------
Title: President Title: Manager
------------------ -------------
15
Exhibit A - List of Licensed Patents
CS MEDICAL
SUMMARY OF PATENTS/APPLICATIONS
------------- ---------------- --------------------------------------------- ------------- ---------------------------
Matter Application Subject Matter Serial No. Status
Number Name Filing Date
------------- ---------------- --------------------------------------------- ------------- ---------------------------
05785- Microwave A medical instrument for 09/248,165 Issued as U.S. Patent No.
005001 Devices for providing/withdrawing heat from a target 6,181,970 on January 30,
Medical area (e.g., tumor). February 9, 2001
Hyperthermia, 1999
05785- Thermotherapy
005WO1 and Diagnosis
(Microwave PCT Published as WO 00/47281
Heat Pipe) Application on August 17, 2000
US00/03226
Microwave
Devices for February 8,
Medical 2000
Hyperthermia
Thermotherapy
and Diagnosis
(Microwave
Heat Pipe)
------------- ---------------- --------------------------------------------- ------------- ---------------------------
05785- Microwave A medical instrument having a collinear 09/248,168 Issued as U. S. Patent
006001 Systems for array of antennas used to precisely focus No. 6,097,985 on August 1,
Medical electromagnetic (EM) energy to a desired February 9, 2000
Hyperthermia, area of tissue. The medical instrument 1999
Thermotherapy includes an EM source for providing the EM and
Diagnosis energy individually to each of the antennas
05785- (3D Microwave at a selected amplitude and phase
006WO1 Antenna System) characteristic. PCT Published as WO 00/47283
Application on August 17, 2000
Microwave US00/03451
Systems for
Medical February 9,
Hyperthermia, 2000
Thermotherapy
and Diagnosis
(3D Microwave
Antenna System)
------------- ---------------- --------------------------------------------- ------------- ---------------------------
05785- Microwave Relates to a unique antenna structure 09/248,170 Issue Fee paid March 20,
011001 Antenna for having an outer helical winding surrounding 2001.
Medical an inner antenna (e.g., a dipole antenna). February 9, Awaiting Letters Patent
Hyperthermia, 1999
Thermotherapy It is important to note that, with the
and Diagnosis 005001, 006001, and 011001 applications
(Helical were filed on the same day.
Antenna)
The specifications of each application were
virtually identical.
This approach allowed us to file claims covering
various combinations of the concepts described in
the individual applications. For example,
collinear array arrangements for diagnostic
imaging and
structured as heat pipes are covered.
------------- ---------------- --------------------------------------------- ------------- ---------------------------
16
------------- ---------------- --------------------------------------------- ------------- ---------------------------
Matter Application Subject Matter Serial No. Status
Number Name Filing Date
------------- ---------------- --------------------------------------------- ------------- ---------------------------
05785-011WO1 Similarly, methods of treating the prostate
including using a pair of antennas, one of PCT Published as WO 00/47282
Medical which is configures as a helical antenna Application on August 17, 2000
Hyperthermia, are covered as well. US00/03340
Thermotherapy
and Diagnosis February 9,
(Helical 2000
Antenna)
------------- ---------------- --------------------------------------------- ------------- ---------------------------
05785- Heat Pipe Array An array of antennas for providing 09/377,458 All claims (1-54)
014001 increased uniformity of radiated microwave allowed. Issue fee due
energy into a tissue mass (e.g., tumor). August 19, June, 2001
1999
------------- ---------------- --------------------------------------------- ------------- ---------------------------
05785- Microwave A microwave diagnostic system composed of a Unfiled In progress
017001 Diagnostics collection of electromagnetic source
antennas capable of propagating microwave
frequency radiation into the human body.
Electrical and magnetic impedance tomography
concepts are used in conjunction with microwave
energy to characterize thermal patterns
------------- ---------------- --------------------------------------------- ------------- ---------------------------
05785- Microwave A medical catheter (e.g. Xxxxx) has a Unfiled In progress
019001 Catheter section with an expanded diameter within
which a radiating antenna is positioned.
The expanded diameter also holds a
dielectric fluid (e.g., water) which forms
a resonant cavity to provide optimum
transmission characteristics.
------------- ---------------- --------------------------------------------- ------------- ---------------------------
17
