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EXHIBIT 10.10
PATENT LICENSE AGREEMENT
This Agreement is entered into as of February 27th, 1997 by and between
Ocular Sciences Ltd., an English corporation formerly known as Precision Lens
Laboratories Ltd. ("OSL"), and Xxxxxxxx Xxxxxx, Xxxxxxx Xxxxxx, Xxxxxx Xxxxxxx,
Xxxxxx Xxxxx and Xxxx Xxxxxxxx (the "Patent Owners").
R E C I T A L S
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A. OSL is a manufacturer of contact lenses.
B. The Patent Owners collectively own certain patents and patent
applications covering technology useful in the manufacture of contact lenses.
C. OSL and the Patent Owners have previously entered into a Patent
License Agreement dated September 30, 1992 (the "Previous Patent License")
which they desire to replace in its entirety with this Agreement.
NOW, THEREFORE, the parties hereto hereby agree as follows:
1. Definitions
1.1 Licensed Patents. The term "Licensed Patents" means the
patents and patent applications listed on Exhibit A attached hereto. Such term
shall also include (i) any patents that issue based on the patent applications
listed on Exhibit A, and (ii) any improvements or modifications to the Licensed
Patents. For the avoidance of doubt, clause (ii) above does not include patents
or patent applications which both (i) embody claims different from those
contained in the Licensed Patents and (ii) would not, if practiced, infringe
against any claim of the Licensed Patents (as currently constituted, or as may
be constituted in the future).
1.2 Licensed Products and Processes. "Licensed Products and
Processes" means any product or process the manufacture, use or sale of which
would, but for the license granted to OSL herein, constitute an infringement of
any valid claim within the Licensed Patents.
2. License. The Patent Owners hereby grant to OSL a perpetual,
irrevocable, fully paid, worldwide, non-exclusive license, to make, have made,
use and/or sell Licensed Products and Processes. OSL may sublicense its rights
hereunder to any company controlling, controlled by or under common control
with OSL (an "Affiliate") but not otherwise.
3. Consideration. This Patent License Agreement is being entered
into pursuant to that certain Settlement Agreement and Release between OSL, the
Patent Owners and certain other persons dated of even date herewith.
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4. Assistance. The Patent Owners shall provide OSL with copies of
all patents and patent applications covered by this Agreement. Except as set
forth in the preceding sentence, the Patent Owners are not obligated to provide
any assistance to OSL regarding Utilization of the Licensed Patents.
5. Acknowledgment. For the avoidance of doubt, the Patent Owners
hereby acknowledge and agree that they do not have any right to prevent or
restrict OSL from using or otherwise commercializing any technology or know-how
that was in OSL's possession as of May 19, 1994.
6. Release. The Patent Owners, for themselves and their
successors and assigns, hereby release and discharge OSL, and all Affiliates of
OSL, and any of their past and present directors, officers, employees, agents,
successors, assigns, customers and the like, from any and all causes of
actions, claims and demands whatsoever in law or in equity, which may have
arisen prior to the date of this Agreement, for any infringement or alleged
infringement of any patent or other intellectual property right held by the
Patent Owners.
7. Non-Assertion of Rights. The Patent Owners further agree that
they will not assert any claim for infringement of any Licensed Patent against
any customer or supplier of OSL, or any Affiliate of OSL, whether direct or
indirect, arising out of any activity permitted under this Agreement or the
Previous Patent License.
8. Prosecution of Patents. The Patent Owners shall proceed with
the prosecution of all patent applications included in the Licensed Patents as
of the date of this Agreement, and shall use diligent efforts to obtain patents
for such applications, at the Patent Owner's expense. The patent owners shall
keep OSL apprised of the status of such applications. The Patent owners shall
also apply for and prosecute patents on substantially the same subject matter
as the Licensed Patents in such other jurisdictions as the Patent Owners
select, at the Patent Owner's expense; provided, however, that if the Patent
Owners do not elect to pursue a patent in a new jurisdiction where OSL desires
that patent coverage be pursued, then the Patent Owners shall nevertheless
pursue patent coverage in such jurisdiction at OSL's request, provided that OSL
agrees to pay for the reasonable cost of such application and prosecution.
9. Enforcement of Patents; Patent Marking.
9.1 Patent Owner Action. The parties hereto agree to
provide the other parties with written notice of any infringement of the
Licensed Patents promptly after discovery of such infringement. Upon notice of
infringement, the Patent Owners will, at their discretion, take whatever action,
if any, which they deem appropriate in the circumstances. If the Patent Owners
institute a lawsuit, OSL, if requested by the Patent Owners, agrees to
cooperate with the Patent Owners in such lawsuit (but can not be required to
join such suit as a party), at the Patent Owners' expense. The Patent Owners
agree to inform OSL upon request of the status of any actions taken by the
Patent Owners. It is understood and agreed that the provisions set forth herein
shall not be deemed or construed as an obligation requiring the Patent Owners
to file a lawsuit against third party infringers of Licensed Patents.
9.2 Damages. If the Patent Owners file a lawsuit against a
possible third party infringer of the Licensed Patents, such lawsuit shall be
under the control of the Patent Owners, the
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expenses of such lawsuit shall be borne solely by the Patent Owners, and 100%
of the net recovery resulting therefrom shall inure to the benefit of the
Patent Owners. Such lawsuit shall not be settled in a manner that results in
the Patent Owners' grant of a license to such third party without the prior
written approval of OSL, not to be unreasonably withheld.
9.3 OSL Right. If the Patent Owners fail to institute a
lawsuit against an infringer within 60 days after notice of a possible
infringement of the Licensed Patents, OSL may institute a lawsuit against such
infringer and such litigation shall be under the control of OSL, the expenses of
such litigation shall be borne solely by OSL, and 100% of the net recovery
resulting therefrom shall inure to the benefit of OSL. If requested by OSL, the
Patent Owners shall join as a party plaintiff in such lawsuit and cooperate
fully with OSL in such lawsuit, at OSL's expense.
9.4 Invalidity. If any claim included within the Licensed
Patents is declared invalid or unenforceable by a court of competent
jurisdiction from which no appeal is or can be taken, such declaration shall not
entitle OSL to receive any credits or refund.
9.5 Patent Marking. OSL shall, to the extent required by
applicable law, affix or cause to be affixed proper statutory patent marking
notices to the label of licensed products.
10. Term. This Agreement shall remain in effect from the date
hereof until the last of the Licensed Patents expires, is abandoned or is
finally adjudicated invalid.
11. Representations by Patent Owners. The Patent Owners hereby
represent to OSL as follows:
11.1 Ownership of Licensed Patents. Together the Patent
Owners own all right, title and interest to the Licensed Patents, free and
clear of any liens, charges or other encumbrances.
11.2 No Other Applicable Patents. The Patent Owners do not
own or have any other interest in any other patents or patent applications
applicable to the cast molding of contact lenses. The Patent Owners are under
no obligation to license any future developments to OSL, except to the extent
set forth in Section 1.1 above.
11.3 Legal Proceedings; No Default. Except for that certain
lawsuit in the English High Court CH 1995 1116, no action, suit, proceeding or
investigation is pending or threatened either by the Patent Owners or by any
other person or entity related to the Licensed Patents or the technology covered
thereby, and the Patent Owners are not aware of any basis therefor. The
execution of this Agreement and the carrying out of its provisions will not
result in a violation of any contract, agreement or obligation of the Patent
Owners.
11.4 Authority. The Patent Owners have all requisite power to
enter into this Agreement and to carry out its terms. All actions on the part
of the Patent Owners necessary for the authorization, execution, delivery and
performance of their obligations hereunder has been taken, and this Agreement,
when executed and delivered by the Patent Owners, shall constitute their valid
and legally binding obligation, enforceable in accordance with its terms.
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11.5 Patent Infringement. The Patent Owners are not aware
of any other person or entity infringing any of the Licensed Patents, or of any
reason why the Licensed Patents or any claim thereof could be challenged or
invalidated.
12. Representations by OSL. OSL hereby represents to the Patent
Owners as follows:
12.1 No Default. The execution of this Agreement and the
carrying out of its provisions will not result in a violation of any contract,
agreement or obligation of OSL or OSI.
12.2 Authority. OSL has all requisite power to enter into
this Agreement and carry out its terms. All actions on the part of OSL
necessary for the authorization, execution, delivery and performance of its
obligations hereunder has been taken, and this Agreement, when executed by OSL,
shall constitute its valid and legally binding obligation, enforceable in
accordance with its terms.
12.3 Patent Infringement. OSL is not aware of any other
person or entity infringing any of the Licensed Patents.
13. General.
13.1 Assignment. This Agreement will bind and inure to the
benefit of each party's successors and assigns. Without limiting the foregoing,
the parties expressly acknowledge that this agreement may be assigned to an
acquiror in connection with an acquisition of OSL or its parent.
13.2 Governing Law/Arbitration. Any disputes arising from or
related to this Agreement shall be resolved by binding arbitration. If an
arbitration is initiated by OSL, then the arbitration shall be held in London,
England, shall be conducted by one or more Queens Counsellors nominated by the
London Common Law and Commercial Bar Association, shall be governed by the law
of England and Wales and shall be conducted pursuant to the Rules of the London
Court of International Arbitration. If the arbitration is initiated by the
Patent Owners, then the arbitration shall be held in San Francisco, California,
USA pursuant to the Commercial Rules of Arbitration of the American Arbitration
Association and shall be governed by the laws of California. Any such
arbitration shall be conducted in a confidential manner.
13.3 Severability. If any provision of this Agreement is
found invalid or unenforceable, that provision will be enforced to the maximum
extent permissible, and the other provisions of this Agreement will remain in
full force and effect.
13.4 Notices. Any notice required or permitted to be given
hereunder shall be given in writing, and shall be served by personal service,
mail, express courier or confirmed facsimile transmission at the address of the
receiving party set forth in this Agreement (or at such different address as
may be designated by such party by written notice to the others). Notice to the
Patent Owners may be provided to Xxxxxxxx Xxxxxx on behalf of all Patent
Owners. All notices or demands by mail shall be by registered mail, shall be
deemed given two days after mailing. Notice by personal service shall be deemed
given when delivered, notice by facsimile shall be deemed given when sent and
notice by express courier shall be deemed given one day after delivery to the
courier.
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13.5 Entire Agreement. This Agreement and its exhibits are
the complete and exclusive agreement between the parties with respect to the
subject matter hereof. This Agreement supersedes any and all prior agreements,
communications and understandings, both written and oral, regarding such
subject matter, including, without limitation, that certain Patent License
Agreement dated September 30, 1992 and that certain Heads of Settlement dated
December 4, 1996. This Agreement may only be amended or modified by a written
document executed by OSL and Xxxxxxxx Xxxxxx, who is hereby appointed by the
Patent Owners to act on their behalf.
13.6 Counterparts. This Agreement may be executed in
counterparts, each of which shall be deemed an original and all of which
together shall constitute one agreement.
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IN WITNESS WHEREOF, the parties hereto have entered into this Agreement
as of the date first written above.
OCULAR SCIENCES LTD.
By: XXXX X. XXXXX
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Its: Director
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Address: Reliant Close
Xxxxxxxxx Xxxx
Xxxxxxxxx, Xxxxxxxxx XX00 0XX
Xxxxxxx
PATENT OWNERS
/s/ XXXXXXX XXXXXX
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Xxxxxxx Xxxxxx
Address: Beacon Wey, The Hangers
Xxxxxxx Xxxxxxx
Xxxxx X000 0XX
Xxxxxxx
/s/ XXXXXXXX XXXXXX
-----------------------------------------
Xxxxxxxx Xxxxxx
Address: Xxx Xxxxx, Xxx Xxxxx
Xxxxxxxxxx
Xxxxxx, X00 0XX
Xxxxxxx
/s/ XXXX XXXXXXXX
-----------------------------------------
Xxxx Xxxxxxxx
Address: 00 Xxxxxx Xxxxx
Xxxxxxxx, Xxxxxx XX0 0XX
Xxxxxxx
/s/ XXXXXX XXXXX
-----------------------------------------
Xxxxxx Xxxxx
Address: 00 Xxxxxxxxxx Xxxxxxx
Xxxx Xxx, Xxxxxxxxxxxx XX0 0XX
Xxxxxxx
/s/ XXXXXX XXXXXXX
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Xxxxxx Xxxxxxx
Address: 0 Xxxxxxxx Xxxxx
Xxxxxxx, Xxxx of Wight
[PATENT LICENSE AGREEMENT]
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EXHIBIT A TO PATENT LICENSE AGREEMENT
LICENSED PATENTS
APPLICATION (A) OR
COUNTRY PATENT (P) NUMBER STATUS
------- ------------------ ------
Xxxxxxxxx (X) 000000 Granted patent.
Canada (A) 2007536 Examination requested. Usually granted
following grant of US/EP Patent.
Great Britain (P) 2226977 Lapsed in favour of European Patent
(UK).
Europe (P) 0 383 425 B1 Granted. In force in national phase in
all 13 designated states:
Austria, Belgium, Switzerland, Germany,
Denmark, Spain, France, UK, Greece,
Italy, Luxembourg, Netherlands, Sweden.
Japan (A) 3697/90 Examination requested.
S. Korea (A) 90-355 Under examination.
Xxxxxxxxx (X) 0000/00 Xxxxxxxxxxxx xx XX-00X0000.
Xxxxxx (X) 00000 Granted patent.
USA (P) 5087015 Granted patent.
