Exhibit 10.29
COMMERCIALIZATION AGREEMENT
THIS COMMERCIALIZATION AGREEMENT (this "Agreement") is executed and
delivered as of November 8, 2005 (the "Effective Date"), by and between
Endocare, Inc., a Delaware corporation ("Endocare"), and CryoDynamics, LLC, a
Michigan limited liability company ("CryoDynamics"). Each of Endocare and
CryoDynamics is referred to herein as a "Party," and, collectively, the
"Parties."
RECITALS
WHEREAS, Endocare and MediPhysics, LLC, a Michigan limited liability
company ("MediPhysics"), executed and delivered that certain Design and
Development Contract, dated as of March 28, 2005 (the "Development Contract");
WHEREAS, following the execution and delivery of the Development Contract
MediPhysics assigned all of its rights and obligations under the Development
Contract (and all of its other assets and liabilities) to CryoDynamics;
WHEREAS, the Development Contract set forth the intention of the Parties to
develop and commercialize medical applications based upon both Parties patents
and know how;
WHEREAS, the parties desire to supersede and replace the Development
Contract with this Agreement; and
WHEREAS, this Agreement sets forth the terms and conditions regarding the
commercialization of existing inventions that arose out of the Development
Contract and future inventions arising out of this Agreement.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises contained herein, the receipt and sufficiency of which are hereby
acknowledged, the Parties hereby agree as follows:
AGREEMENT
1. DEFINITIONS. The following capitalized terms shall have the meanings as
defined below:
1.1 "AFFILIATE" shall mean any Person (whether now existing or hereafter
arising) which, directly or indirectly, controls, is controlled by or is under
common control with another Person (whether now existing or hereafter arising);
for purposes of the foregoing, "control," "controlled by" and "under common
control with" with respect to any Person shall mean the possession, directly or
indirectly, of the power (i) to vote 10% or more of the securities having
ordinary voting power for the election of directors of such Person, or (ii) to
direct or cause the direction of the management and policies of such Person,
whether through the ownership of voting securities or by contract or otherwise.
1.2 "CONFIDENTIAL INFORMATION" shall mean any and all information and
materials disclosed by one Party to another Party pursuant to this Agreement
(whether in writing or in oral,
graphic, electronic or any other form) that are marked or described as,
identified in writing as, or provided under circumstances indicating that such
information and materials are confidential or proprietary. Information or
materials shall not be considered Confidential Information to the extent such
information or materials can be shown to have been: (a) available to the public
prior to the date of disclosure to the other party or to have become available
to the public; (b) rightfully in possession of the other party prior to the date
of disclosure and not otherwise restricted as to disclosure; (c) independently
developed by the other Party without use of or reference to the Confidential
Information of the other Party; or (d) disclosed to other Party without
restriction by a third party who had a right to disclose and was not otherwise
under an obligation of confidence.
1.3 "COPYRIGHTS" shall mean all copyrights, including, without limitation,
in and to works of authorship and all other rights corresponding thereto
throughout the world, whether published or unpublished, including, without
limitation, rights to prepare, reproduce, perform, display and distribute
copyrighted works and copies, compilations and derivative works thereof.
1.4 "DEVELOPMENT INVENTION" shall have the meaning set forth in Section 3.1
below.
1.5 "ENDOCARE EXISTING PRODUCT" any product that is in Endocare's existing
product line that is sold by Endocare, its (sub)licensees (other than
CryoDynamics) or their respective Affiliates and that incorporates, uses or
includes an Endocare Invention.
1.6 "ENDOCARE INVENTION" shall have the meaning set forth in Section 3.2
below.
1.7 "INTELLECTUAL PROPERTY RIGHTS" shall mean any and all rights in and to
intellectual property and intangible industrial property rights, including,
without limitation: (i) Patents, Trade Secrets, Copyrights and Trademarks; and
(ii) any rights similar, corresponding or equivalent to any of the foregoing
anywhere in the world.
1.8 "NET CRYODYNAMICS REVENUES" shall mean all amounts received by
CryoDynamics from the (sub)licensing or commercialization of the Development
Inventions that were the subject of a notification letter approved by Endocare
pursuant to Section 4.3, but excluding amounts received to reimburse
CryoDynamics' cost to perform research, development or similar services, in
reimbursement of patent or other out-of-pocket expenses, or in consideration for
the purchase of any securities of CryoDynamics (at a price up to one hundred
percent (100%) of the then fair market value of such securities).
1.9 "NET ENDOCARE REVENUES" shall mean:
(A) all amounts received by Endocare from the (sub)licensing of
Development Inventions (other than royalties received from CryoDynamics for Net
CryoDynamics Revenues), but excluding amounts received to reimburse Endocare's
cost to perform research, development or similar services, in reimbursement of
patent or other out-of-pocket expenses, or in consideration for the purchase of
any securities of Endocare (at a price up to one hundred percent (100%) of the
then fair market value of such securities).
(B) Five percent (5%) of all amounts received by Endocare for the
sales of products sold by Endocare that are solely based upon a Development
Invention less (i) credits,
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allowances, discounts and rebates to, and chargebacks from the account of, such
customers for damaged and returned products; (ii) freight and insurance costs
incurred in transporting such products to customers; (iii) cash, quantity and
trade discounts, rebates and other price reductions for such products given to
such customers under price reduction programs that are consistent with industry
practices; (iv) sales, use, value-added and other direct taxes incurred on the
sale of products to customers; and (v) customs duties, surcharges and other
governmental charges incurred in exporting or importing such products to
customers. To the extent Endocare incorporates a Development Invention into an
Endocare Existing Product, CryoDynamics will be compensated based upon Section
5.2.
1.10 "NITROGEN SYSTEM AND APPARATUS" shall mean the nitrogen system that is
developed, modified and/or improved by CryoDynamics pursuant to the Development
Contract and/or this Agreement.
1.11 "PATENTS" shall mean all United States and foreign patents and utility
models and applications therefore and all reissues, divisions, re-examinations,
renewals, extensions, provisionals, continuations and continuations-in-part
thereof, and equivalent or similar rights anywhere in the world in inventions
and discoveries.
1.12 "PERSON" shall include any individual and any corporation, limited
liability company, limited or general partnership or other entity.
1.13 "PRE-EXISTING TECHNOLOGY" shall mean all technology in or to the
Nitrogen System and Apparatus (other than Development Inventions) that are
reasonably necessary for Endocare to use, access or incorporate in order to
exercise its rights under this Agreement with respect to the research,
development, making, using, offering for sale or importing of Endocare Existing
Products or Development Inventions.
1.14 "TRADEMARKS" shall mean any and all trademarks, service marks, logos,
trade names, corporate names, Internet domain names and addresses and
general-use e-mail addresses, and all goodwill associated therewith throughout
the world.
1.15 "TRADE SECRETS" shall mean all trade secrets under applicable law and
other rights in know-how and confidential or proprietary information,
processing, manufacturing or marketing information, including, without
limitation, new developments, inventions, processes, ideas or other proprietary
information that provide a Person with advantages over competitors who do not
know or use such information and documentation thereof (including, without
limitation, related papers, blueprints, drawings, chemical compositions,
formulae, diaries, notebooks, specifications, designs, methods of manufacture
and data processing software, compilations of information) and all claims and
rights related thereto.
2. PROJECTS.
2.1 NITROGEN SYSTEM AND APPARATUS. CryoDynamics will design and develop a
Nitrogen System and Apparatus, using CryoDynamics' technology. CryoDynamics will
provide Endocare with one or more prototypes of the Nitrogen System and
Apparatus and documentation and information sufficient to enable Endocare to
evaluate and perform developmental testing on the Nitrogen System and Apparatus.
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(A) DELIVERY. CryoDynamics will use its best efforts to deliver the
Nitrogen System and Apparatus to Endocare. CryoDynamics will deliver the
Nitrogen System and Apparatus to Endocare at Endocare's Irvine, California
facility.
(B) DEVELOPMENT TESTING. Endocare will have the right to evaluate and
test the Nitrogen System and Apparatus. CryoDynamics will provide technical
support to Endocare during Endocare's evaluation and testing of the Nitrogen
System and Apparatus.
2.2 DEVELOPMENT OF ENHANCEMENTS TO ENDOCARE EXISTING PRODUCTS OR
TECHNOLOGY. CryoDynamics will provide developmental assistance on the Endocare
Existing Products. CryoDynamics will apply its Intellectual Property, as was set
forth on Exhibit B to the Development Contract, to accomplish these enhancements
of the Endocare product line.
3. INVENTIONS. The parties acknowledge and agree that:
3.1 DEVELOPMENT INVENTIONS. Except as set forth in Section 3.2, below, the
Parties jointly own all right, title and interest in and to all inventions,
discoveries, compositions, enhancements, technologies, data or information
(whether or not patentable) made or conceived by CryoDynamics in the performance
of, and during the term of, the Development Contract or this Agreement
(collectively, the "DEVELOPMENT INVENTIONS").
3.2 ENDOCARE INVENTIONS. Endocare solely owns all right, title and interest
in and to all inventions, discoveries, compositions, enhancements, technologies,
data or information (whether or not patentable) in each case that are related to
Endocare's current product line and that are made or conceived by CryoDynamics
in the performance of, and during the term of, the Development Contract or this
Agreement (collectively, the "ENDOCARE INVENTIONS"). CryoDynamics hereby sells,
assigns and transfers to Endocare all of CryoDynamics' right, title and interest
therein and thereto.
3.3 ONGOING RESEARCH AND DEVELOPMENT. CryoDynamics and Endocare desire to
conduct further research and development of the Nitrogen System and Apparatus to
demonstrate that the technology can be used as the basis for commercial products
in the medical field to provide clinical benefits to patients. To assist
CryoDynamics in its continued research and development efforts, Endocare will
advance CryoDynamics $42,500 per month beginning October 1, 2005. This monthly
advance by Endocare will continue until such time as either Endocare or
CryoDynamics enters into a license agreement based upon the Nitrogen Systems and
Apparatus with an independent third party that results in CryoDynamics receiving
an amount sufficient to repay any funds advanced by Endocare and fund their
monthly operating expenses of $42,500.
4. LICENSE GRANTS.
4.1 TO ENDOCARE. Subject to the terms and conditions of this Agreement,
CryoDynamics hereby grants to Endocare under all of CryoDynamics' Intellectual
Property Rights an exclusive, worldwide license (with the right to sublicense)
to research, develop, make, use, sell, offer for sale, import or practice the
Development Inventions and Pre-Existing Technology in all medical fields of use.
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4.2 TO CRYODYNAMICS. Subject to the terms and conditions of this Agreement,
with respect to those Development Inventions that were the subject of a
notification letter approved by Endocare pursuant to Section 4.3, Endocare
hereby grants to CryoDynamics under all of Endocare's Intellectual Property
Rights an exclusive, worldwide license (with the right to sublicense) to
research, develop, make, use, sell, offer for sale, import or practice such
Development Invention in the field of use specified in such notification letter.
4.3 OPPORTUNITIES. During the term of this Agreement, if CryoDynamics
provides to Endocare a notification letter that sets forth a proposed business
opportunity involving a Development Invention in a field of use and Endocare
notifies CryoDynamics in writing that Endocare does not desire to commercialize
such opportunity, then (a) CryoDynamics shall have the right to commercialize
such opportunity, subject to the payment of royalties set forth below, and (b)
Endocare shall grant to CryoDynamics the license set forth in Section 4.2 above
with respect to the applicable Development Invention and field of use.
Notwithstanding the foregoing, CryoDynamics acknowledges and agrees that
Endocare shall not be obligated to participate, carry on, authorize, assist or
finance CryoDynamics in any way with respect to any such opportunity that
Endocare has notified CryoDynamics that Endocare does not desire to
commercialize such opportunity. In those situations in which Endocare provides
written notification to CryoDynamics that it does not desire to commercialize a
particular business opportunity, CryoDynamics will pay Endocare twenty-five
percent (25%) of all amounts received by CryoDynamics from the (sub)licensing
related to the specific opportunity. Furthermore, should the situation arise in
which CryoDynamics deems it to be in their best interest to commercialize a
particular opportunity that Endocare has declined to commercialize, the parties
agree that CryoDynamics will pay Endocare twenty-five percent (25%) of five
percent (5%) of all amounts received by CryoDynamics on a basis consistent with
section 1.9(b).
5. FINANCIAL CONSIDERATIONS.
5.1 DEVELOPMENT INVENTION ROYALTIES. The Parties agree that all royalties
or license fees related to one parties commercialization of a Development
Invention will be handled on the following basis:
(A) First, all amounts paid/advanced by either Party (including
without limitation, any and all funds advanced to CryoDynamics by Endocare for
development work, patent legal costs and other such expenses of CryoDynamics)
will be reimbursed to such Party from any revenues received by a Party for the
licensing or commercialization of a Development Invention before calculating the
Net CryoDynamics Revenues or Net Endocare Revenues (as applicable).
(B) Second, an amount will be paid to each of the Parties, from any
revenues received by a Party for the licensing or commercialization of a
Development Invention before calculating the Net CryoDynamics Revenues or Net
Endocare Revenues (as applicable), to reimburse each of them at a reasonable,
mutually agreed upon rate for any services required under this Agreement that
has not been advanced/paid for separately in the agreement.
(C) Finally, Endocare shall pay to CryoDynamics twenty-five percent
(25%) of remaining Net Endocare Revenues and CryoDynamics shall pay to Endocare
seventy-five
5
percent (75%) of remaining Net CryoDynamics Revenues, subject to Section 4.3,
such that the seventy-five percent (75%) refers only to situations in which
CryoDynamics has taken the lead on licensing agreements in a field of use
specified as an area of interest by Endocare.
5.2 ENDOCARE EXISTING PRODUCTS. For any Endocare Existing Products that a
Development Invention is incorporated by Endocare, Endocare will pay to
CryoDynamics five percent (5%) of (i) the net reduction in the total costs of
the materials used to manufacture the product associated with the Develop
Invention, less any increase in labor costs, if any, less (ii) reimbursement to
Endocare by CryoDynamics for any payments made by Endocare to CryoDynamics
during the development of the Development Invention, if any, that has not been
separately reimbursed pursuant to Section 5.1 above ("Net Endocare Existing
Products Revenue"). Should the situation arise that Endocare wants to implement
a Development Invention, but there is no cost savings, the Parties will mutually
agree upon an appropriate payment to CryoDynamics.
5.3 PAYMENT REPORTS.
(A) Within sixty (60) days after the end of each calendar quarter
during the term of this Agreement, and within sixty (60) days following the
expiration or termination of this Agreement, Endocare shall furnish to
CryoDynamics a written report showing in reasonably specific detail all Net
Endocare Revenues and Net Endocare Existing Product Revenues and the calculation
of the royalties, if any, that shall have accrued based upon such amounts.
(B) Within sixty (60) days after the end of each calendar quarter
during the term of this Agreement, and within sixty (60) days following the
expiration or termination of this Agreement, CryoDynamics shall furnish to
Endocare a written report showing in reasonably specific detail all Net
CryoDynamics Revenues and the calculation of the royalties, if any, that shall
have accrued based upon such amounts.
(C) With respect to amounts received in a currency other than United
States dollars, all such amounts shall be expressed both in the currency in
which such amounts were received and in the United States dollar equivalent. The
United States dollar equivalent shall be calculated using the average of the
exchange rate (local currency per US$1) published in The Wall Street Journal,
Western Edition, under the heading "Currency Trading" on the last business day
of each month during the applicable calendar quarter.
(D) Each party shall keep complete and accurate records in sufficient
detail to enable the amounts payable hereunder to be determined.
5.4 AUDITS.
(A) Upon the written request of a party (the "Payee") and not more
than once in each calendar year, the other party (the "Payor") shall permit an
independent certified public accounting firm of nationally recognized standing,
selected by the Payee and reasonably acceptable to the Payor, at the Payee's
expense, to have access during normal business hours to such of the records of
the Payor as may be reasonably necessary to verify the accuracy of the payment
reports hereunder for the eight (8) calendar quarters immediately prior to the
date of
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such request (other than records for which the Payee has already conducted an
audit under this Section).
(B) If such accounting firm concludes that additional amounts were
owed during the audited period, the Payor shall pay such additional amounts
within thirty (30) days of the date the Payee delivers to the Payor such
accounting firm's written report so concluding. The fees charged by such
accounting firm shall be paid by the Payee; provided, however, if the audit
discloses that the royalties payable by the Payor for such period are more than
one hundred ten percent (110%) of the royalties actually paid for such period,
then the Payor shall pay the reasonable fees and expenses charged by such
accounting firm.
(C) The Payee shall cause its accounting firm to retain all financial
information subject to review under this Section 5.2 in strict confidence;
provided, however, that the Payor shall have the right to require that such
accounting firm, prior to conducting such audit, enter into an appropriate
non-disclosure agreement with the Payor regarding such financial information.
The accounting firm shall disclose to the Payee only whether the reports are
correct or not and the amount of any discrepancy. No other information shall be
shared. The Payee shall treat all such financial information as Payor's
Confidential Information.
5.5 PAYMENT TERMS. All amounts shown to have accrued by each payment report
provided for under Section 5.2 above shall be payable on the date such payment
report is due. Payment of amounts in whole or in part may be made in advance of
such due date.
5.6 PAYMENT METHOD. All payments by the Payor to the Payee under this
Agreement shall be paid in United States dollars and all such payments shall be
originated from a United States bank located in the United States and made by
bank wire transfer in immediately available funds to such account as the Payee
shall designate before such payment is due.
5.7 EXCHANGE CONTROL. If at any time legal restrictions prevent the prompt
remittance of part or all royalties with respect to any country where amounts
are received by the Payor, the Payor shall have the right, at its option, to
make such payments by depositing the amount thereof in local currency to the
Payee's account in a bank or other depository in such country. If the royalty
rate specified in this Agreement should exceed the permissible rate established
in any country, the royalty rate for sales in such country shall be adjusted to
the highest legally permissible or government-approved rate.
5.8 WITHHOLDING TAXES. The Payor shall be entitled to deduct the amount of
any withholding taxes, value-added taxes or other taxes, levies or charges with
respect to such amounts, other than United States taxes, payable by the Payor,
or any taxes required to be withheld by the Payor, to the extent the Payor pays
to the appropriate governmental authority on behalf of the Payee such taxes,
levies or charges. The Payor shall use reasonable efforts to minimize any such
taxes, levies or charges required to be withheld on behalf of the Payee by the
Payor. The Payor promptly shall deliver to the Payee proof of payment of all
such taxes, levies and other charges, together with copies of all communications
from or with such governmental authority with respect thereto.
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6. REPRESENTATIONS, WARRANTIES AND COVENANTS OF CRYODYNAMICS; INDEMNIFICATION.
6.1 PRODUCTS AND SERVICES. CryoDynamics represents, warrants and covenants
that: (a) CryoDynamics shall comply with all applicable laws and regulations
with respect to its performance under this Agreement; (b) the Nitrogen System
and Apparatus delivered to Endocare hereunder shall be satisfactory for the
purposes of developmental testing; and (c) any services performed hereunder
shall be performed in a professional and competent manner.
6.2 INTELLECTUAL PROPERTY RIGHTS OF OTHERS. In connection with its
performance of this Agreement, neither party infringe or otherwise violate any
third party's intellectual property rights, nor shall either Party and shall not
directly or indirectly cause the other to do so. The indemnification provisions
contained in the following section apply to these obligations.
6.3 INDEMNIFICATION.
(A) CryoDynamics shall indemnify, defend and hold harmless, Endocare
and its Affiliates, and their respective officers, directors, employees,
consultants, customers, successors and assigns, from and against any and all
claims of third parties for losses, liabilities, costs, damages, claims, fines,
penalties and expenses (including, without limitation, costs of defense or
settlement and reasonable attorneys', consultants' and experts' fees) that arise
out of or result from: (a) injuries or death to persons or damage to property,
in any way arising out of or caused or alleged to have been caused by the work
or services performed by, or the Nitrogen System and Apparatus provided by,
CryoDynamics before the date of delivery of the Nitrogen System and Apparatus to
Endocare; (b) assertions under workers' compensation or similar acts made by
persons employed by or otherwise associated with CryoDynamics; (c) any breach of
any representation, warranty or covenant by CryoDynamics or failure of
CryoDynamics to perform any of its obligations under this Agreement; or (d)
violation of any applicable law or regulation in any way arising out of or
caused or alleged to have been caused by CryoDynamics' work or services under
this Contract or by the Nitrogen System and Apparatus provided by CryoDynamics.
(B) Endocare shall indemnify, defend and hold harmless, CryoDynamics
and its Affiliates, and their respective officers, directors, employees,
consultants, customers, successors and assigns, from and against any and all
claims of third parties for losses, liabilities, costs, damages, claims, fines,
penalties and expenses (including, without limitation, costs of defense or
settlement and reasonable attorneys', consultants' and experts' fees) that arise
out of or result from: (a) injuries or death to persons or damage to property,
in any way arising out of or caused or alleged to have been caused by the work
or services performed by, or the Nitrogen System and Apparatus provided by,
CryoDynamics after the date of delivery of the Nitrogen System and Apparatus to
Endocare; (b) assertions under workers' compensation or similar acts made by
persons employed by or otherwise associated with Endocare; (c) any breach of any
representation, warranty or covenant by Endocare or failure of Endocare to
perform any of its obligations under this Agreement; or (d) violation of any
applicable law or regulation in any way arising out of or caused or alleged to
have been caused by Endocare's developmental testing of the Nitrogen System and
Apparatus provided by CryoDynamics.
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7. RIGHT OF FIRST REFUSAL. During the term of this Agreement, should
CryoDynamics intend to accept an offer from any potential buyer for the sale of
all or part of CryoDynamics' business (whether by asset sale, merger,
reorganization, change of control, operation of law or otherwise) (a "Third
Party Offer"), CryoDynamics shall first notify Endocare in writing and provide
to Endocare a written copy of the terms and conditions of such Third Party
Offer. For a period of sixty (60) days following the receipt of such notice and
a copy of such Third Party Offer (the "Review Period"), Endocare shall have the
right to acquire CryoDynamics on substantially the same terms and conditions set
forth in such Third Party Offer. If, during such sixty (60) days, the applicable
third party alters the terms of the applicable Third Party Offer in a negative
manner (with respect to CryoDynamics), then CryoDynamics shall provide Endocare
with a written copy of such revised Third Party Offer, and (i) Endocare shall
have the right to acquire CryoDynamics on substantially the same terms and
conditions set forth in such revised Third Party Offer, and (ii) the Review
Period for such revised Third Party Offer shall be extended by an additional
thirty (30) days.
8. TERM AND TERMINATION.
8.1 TERM. The term of this Agreement shall commence on the Effective Date
and shall continue until the later of (a) December 31, 2015, and (b) the parties
obligations to pay royalties pursuant to Section 5 above, or until terminated
pursuant to Section 8.2.
8.2 TERMINATION FOR BREACH, ETC. Either Party may terminate this Agreement
in the event that: (a) the other Party breaches any provision of this Agreement
and such breach continues for a period of thirty (30) days following the receipt
by the breaching Party of written notice of such breach; or (b) the other Party
becomes insolvent, is adjudicated bankrupt, voluntarily or involuntarily files a
petition for bankruptcy, makes an assignment for the benefit of creditors, seeks
any other similar relief under any bankruptcy law or related statues or
otherwise becomes financially incapable of performing its obligations in
accordance with the terms of this Agreement, and such judgment, assignment or
incapacity is not revoked within sixty (60) days.
9. CONFIDENTIALITY.
9.1 RESTRICTIONS ON DISCLOSURE AND USE OF CONFIDENTIAL INFORMATION. Neither
Party shall use the Confidential Information of the other Party except for the
purpose of performing its obligations under this Agreement. Each party shall
maintain the Confidential Information of the other Party with at least the same
degree of care it uses to protect its own confidential information of a similar
nature or sensitivity, but no less than reasonable care under the circumstances.
Unless a Party grants specific, written, advance permission to do so, the other
Party shall not disclose any Confidential Information to any third party except
as provided in Section 9.2. Each Party shall limit access to the Confidential
Information of other Party to their employees and independent contractors who
have a need to know such information in order to perform the Party's obligations
and exercise its rights under this Agreement and who are bound by
confidentiality and non-use obligations to the Party at least equivalent to the
Party's obligations to the other Party under this Agreement.
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9.2 EXCEPTIONS. Either Party may disclose Confidential Information of the
other Party to the extent required by Law or order of a court of competent
jurisdiction, provided that, in such event, the disclosing party shall provide
the other party prompt, advance written notice of such requirement.
9.3 RETURN OF CONFIDENTIAL INFORMATION. Upon any termination of this
Agreement both Parties shall return or destroy all Confidential Information of
Discloser and any copies thereof.
9.4 NO PUBLIC STATEMENTS. CryoDynamics will not issue any press release or
otherwise make any public statements with respect to the transactions
contemplated by this Agreement without the prior written consent of Endocare,
except as may be required by applicable law.
10. MISCELLANEOUS.
10.1 ASSIGNMENT. Neither Party shall assign, transfer, delegate or
otherwise dispose of, any rights or obligations under this Agreement without the
prior written consent of the other Party; provided, however, that the foregoing
limitation shall not apply to any acquisition involving a Party (whether
structured as a merger or sale of stock or assets) or to an assignment by
CryoDynamics to another limited liability company composed of the same members
as CryoDynamics. Except as provided herein, any purported assignment, transfer,
delegation or other disposition by either Party shall be null and void. Subject
to the foregoing, this Agreement shall be binding upon and shall inure to the
benefit of the Parties and their respective successors and permitted assigns.
10.2 GOVERNING LAW; JURISDICTION AND VENUE. This Agreement is to be
construed in accordance with and governed by the laws of the State of California
without giving effect to any choice of law rule that would cause the application
of the laws of any jurisdiction other than the laws of the State of California
to the rights and duties of the Parties. The exclusive jurisdiction and venue
for any dispute arising out of this Agreement shall be (1) in the federal or
state courts located in Irvine, California, if CryoDynamics institutes the
action, or (2) in the federal or state courts located in Detroit, Michigan, if
Endocare institutes the action.
10.3 FURTHER ASSURANCES. At any time or from time to time on and after the
date of this Agreement, CryoDynamics shall, at the request of Endocare, promptly
(a) deliver to Endocare such records, data or other documents consistent with
the provisions of this Agreement, (b) execute and deliver or cause to be
delivered all such assignments, consents, documents or further instruments of
transfer or license, and (c) take or cause to be taken all such other actions as
Endocare may reasonably deem necessary or desirable in order for Endocare to
obtain the full benefits of this Agreement and the transactions contemplated
hereby.
10.4 NON-WAIVER. Failure by any Party to insist upon strict performance of
any of the terms and conditions hereof, or delay in exercising any rights or
remedies provided herein, shall not release the other Party from any of the
obligations of this Agreement and shall not be deemed a waiver of any rights of
any Party to insist upon strict performance thereof.
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10.5 ATTORNEYS' FEES. In the event either Party brings legal action to
enforce any provision herein, the prevailing Party shall be entitled to collect
from the losing Party reasonable attorneys' fees and costs incurred.
10.6 ENTIRE AGREEMENT AND MODIFICATION. No other agreement or
understanding, including the Development Contract which is hereby expressly
superseded and replaced, in any way modifying these terms and conditions, either
before or after the execution hereof, shall be binding upon either Party unless
in writing and signed by all of the Parties. This Agreement constitutes the
entire Agreement between the Parties. In the event of any conflict between the
terms and conditions of this Agreement and those of any purchase order or any
other document, the terms and conditions of this Agreement shall control.
10.7 STATUS OF THE PARTIES. Each Party hereby represents and warrants that
it is engaged in an independent business and shall perform its obligations under
this Agreement as an independent contractor and not as an agent or employee of
or a joint venturer of the other Party; that the Persons performing the services
hereunder on behalf of such Party are not agents or employees of the other
Party; that it has and hereby retains, except as set forth herein, the right to
exercise full control with respect to the means of its performance hereunder and
full control over the employment, direction, compensation and discharge of all
employees, agents and subcontractors assisting in such performance; that it
shall be solely responsible for all matters relating to payment of such
employees, including compliance with worker's compensation, unemployment and
disability insurance, social security withholding, and all such matters; and
that it shall be responsible for its acts and the acts of all agents, employees
and contractors employed by it during its performance under this Agreement.
10.8 SEVERABILITY. If any one or more of the provisions contained in this
Agreement shall, for any reason, be held to be invalid, illegal or unenforceable
in any respect, such invalidity, illegality or unenforceability shall not affect
any other provision hereof, and this Agreement shall be construed as if such
invalid, illegal or unenforceable provision had never been contained herein.
10.9 NOTICE. All notices required hereunder shall be in writing and shall
be sent by a recognized courier service (e.g., UPS, DHL, Federal Express) or
certified mail, with all postage or delivery charges prepaid, and shall be
addressed to the Parties at their addresses set forth on the signature page of
this Agreement or to such other address (es) as may be furnished by written
notice in the manner set forth herein. Notice is effective upon receipt.
10.10 HEADINGS. The headings of the Sections in this Agreement are for
convenience only and shall not be deemed to affect, qualify, simplify, add to or
subtract from the contents of the clauses that they reference.
10.11 COUNTERPARTS. This Agreement may be executed in counterparts, each of
which shall be deemed an original, but all of which together shall constitute
one and the same instrument.
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be
executed by its duly authorized representative.
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ENDOCARE, INC. CRYODYNAMICS, LLC
By: /s/ Xxxxxxx X. Xxxxx By: /s/ Xxxxx X. Xxxxxxx, M.D.
--------------------------------- ------------------------------------
Name: Xxxxxxx Xxxxx Name: Xxxxx X. Xxxxxxx, M.D.
Title: President/COO Title: Managing Partner
Address for Notices: Address for Notices:
000 Xxxxxxxxxx Xxxxx 000 Xxxxxxxxxx
Xxxxxx, Xxxxxxxxxx 00000 Xxxxxxxxxx Xxxxx, XX 00000
Attention: Xxx Xxx Attention: Xxxxx X. Xxxxxxx
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