EXHIBIT 10.24
AGREEMENT TO AMEND
LICENSE AND DEVELOPMENT AGREEMENT
This agreement, made and effective this 15 day of September, 1995
(the Effective Date", by and between Xxxxx X. XxXxxxxx of Southampton,
Massachusetts (hereinafter referred to as XxXxxxxx), XxXxxxxx Optics, Inc., a
Massachusetts corporation having a principal place of business at 000 Xxxxxxx
Xxxxxxx, Xxxxxxxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter referred to as MOI), and
Vista Medical Technologies, a California corporation having a place of business
at 000 Xxxxxxxx Xxxx, Xxxxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter referred to as
"Vista").
Whereas on 18 December 1991 XxXxxxxx and MOI entered into a License And
Development Agreement (hereinafter the "License Agreement") whereby they
licensed certain technology to American Surgical Technologies Corporation, a
Delaware Corporation having a principal office at Xxx XxXxxxxx Xxxxxx, Xxxxxx,
Xxxxxxxxxxxxx (hereinafter referred to as "AST");
Whereas on 28 June 1994 said License Agreement was amended by
mutual agreement of XxXxxxxx, MOI and AST;
Whereas Vista has agreed to purchase the assets of AST, which
purchase includes an assignment of AST's rights and obligations as licensee
under said License Agreement; and
Whereas an inducement to purchase of the assets of AST is the transfer
of said license from AST to Vista;
Whereas, Vista desires to amend the License Agreement in order to
obtain necessary assurances and make it conform to its particular business
needs and objectives;
NOW, THEREFORE, in consideration of the premises, XxXxxxxx, MOI and Vista agree
that the License Agreement is amended as follows:
1. Subject to Vista's purchase of the assets of AST, XxXxxxxx and MOI
agree to assignment and transfer of the License Agreement from AST to Vista and
they and Vista agree that henceforth the term Licensee shall mean Vista and any
successor, assign or subsidiary thereof.
2. Article 1.7 is amended to read as follows:
"Marketing Period" shall mean any twelve (12) month period commencing
with April 1, 1995 or any subsequent anniversary of that date."
Vista/XxXxxxxx Agreement
3. The following new article is added:
1.9 As used herein, the term "endoscope" means a device
that essentially consists of (1) a hollow member having a distal
end and a proximal end and a selected length and outer diameter, and
(2) an optical lens system mounted within the hollow member for
gathering light and providing an optical image of a selected area or
site in front of said distal end, with the optical lens system
comprising an objective lens with or without relay, focusing and
ocular lenses. Optionally the device may include within said hollow
member light-transmitting means for illuminating the area or site in
front of said distal end of said hollow member and electronic
photodetector means for generating electrical signals in response to
images relayed thereto by the optical imaging system. The term
"endoscope" shall not be construed to include any of the following:
video signal processing or switching equipment, video monitors, video
display equipment, head-up display devices, light sources, power
supplies, or detachable accessory devices such as cables, connectors,
and couplers.
4. Article 3.1 is amended by addition of the following clause:
(e) Royalties under 3.1 (c)(ii) shall accrue and be paid only with
respect to such Licensed Products as are covered by, or made in
accordance with or by use of methods and apparatus covered by,
at least one claim (which has not expired, lapsed, or been duly
disclaimed) of at least one patent included within the Licensed Patent
Rights which is then subsisting as a valid patent in the country where
such Licensed Products are manufactured or sold or to which they are
exported.
5. Article 10 is amended by addition of the following clauses:
10.5 XxXxxxxx and MOI represent and warrant that the MOI is the sole
and exclusive owner of the U.S. applications and patents listed in
Appendix A and that they have done nothing to limit, compromise or
condition the ownership thereof by MOI or limit or condition the
exclusive rights granted to the Licensee under said License Agreement.
10.6 XxXxxxxx and MOI confirm that Article 3.1 (c)(i) was amended
June 28, 1994 by a letter agreement and that no other
Vista/XxXxxxxx Agreement 2
amendments were made to the License Agreement prior to the effective
date of this Agreement.
6. Article 11 is amended to provide that notices or other communications
made or given to Vista as Licensee shall be addressed as follows:
Vista Medical Technologies, Inc.
0000 Xxxxx Xxxxxx Xxxx
Xxxxxxxx, XX 00000
Attention: Mr. Xxxx Xxxx
With a copy to:
Vista Medical Technologies, Inc.
000 Xxxxxxxx Xxxx
Xxxxxxxx, XX 00000
Attention: Xx. Xxx Xxxx
7. Appendix A is replaced by the following new Appendix:
APPENDIX A
TECHNOLOGY
1. A stereo objective lens (the "Lens") for use in endoscopes of any
length, diameter or configuration, as disclosed in U.S. Application Ser. No.
* * * filed * * * by XxXxxxxx (now U.S., Patent No. * * * ).
2. A stereo objective lens (the "Lens") for use in endoscopes of any
length, diameter or configuration, as disclosed in U.S. Application Ser. No.
* * * filed * * * by XxXxxxxx (now U.S., Patent No. * * * ).
3. A stereo video endoscope objective lens system for use in endoscopes
of any length, diameter or configuration, as disclosed in U.S.
Application Ser. No. * * * , filed * * * .
4. A relay lens configuration ("Relay Lens") for endoscopes, as disclosed
in U.S. Applications Ser. Nos. * * * , filed * * * (now
U.S. Patent No. * * * ) and * * * , filed * * * (now U.S. Patent
No. * * * ).
* * * Confidential Treatment Requested
Vista/XxXxxxxx Agreement 3
5. All know-how, copyrights, trade secrets, inventions and other
intellectual property or proprietary rights relating to manufacture of the Lens
and/or incorporating the Lens and/or Relay Lens into a medical endoscope
and connecting such endoscope to an endoscopic video system in a manner which
results in an apparent three dimensional image of the object being viewed with
the endoscope (a "3-D Video System").
IN WITNESS WHEREOF, XxXxxxxx has affixed his signature and MOI and Vista have
caused this agreement to be executed by a duly authorized officer
or representative thereof, as of the day and year first above written.
/s/ Xxxxx X. XxXxxxxx
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Xxxxx X. XxXxxxxx
XxXxxxxx Optics, Inc.
("MOI")
By: /s/ Xxxxx X. XxXxxxxx
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Name: Xxxxx X. XxXxxxxx
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Title: Pres.
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Vista Medical Technologies, Inc.
("Vista")
By: /s/ Xxxx Xxxx
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Name: Xxxx Xxxx
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Title: President
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Vista/XxXxxxxx Agreement 4
