EXHIBIT 10.9
NON-COMPETITION, CONFIDENTIALITY
AND ASSIGNMENT OF INVENTIONS AGREEMENT
This Agreement ("Agreement") dated as of November 2, 1997 is made and
entered into by and between Applied Biometrics, Inc., a Minnesota corporation
(the "Company") and Xx. Xxxxxx Xxxxxxxx ("Xxxxxxxx").
BACKGROUND
The Company and Xxxxxxxx are parties to a certain Purchase Agreement
(the "Purchase Agreement") dated October 23, 1997, whereby the Company acquired
all right, title and interest in specified assets (the "Assets," as that term is
defined in the Purchase Agreement). As a material inducement to the Company's
agreement to enter into and consummate the transactions contemplated by the
Purchase Agreement, the parties have agreed to enter into this Agreement and
hereby acknowledge the importance of the Company's ability to protect its
significant interest in the Assets and in the Company's worldwide business of
developing, marketing, distributing and selling "Vessel/Septal Occluder Devices"
and related products, instruments or devices.
NOW, THEREFORE, in consideration of the foregoing and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows:
ARTICLE 1
CONSIDERATION
1.1 The Company and Xxxxxxxx hereby acknowledge and agree that the
Company's execution of and continued performance under the Purchase Agreement
are conditioned upon Xxxxxxxx'x execution of and continued performance under
this Agreement.
1.2 The parties hereby acknowledge and agree that the consideration
furnished by the Company to Xxxxxxxx as contemplated by Article 3 of the
Purchase Agreement shall serve as the consideration for this Agreement.
ARTICLE 2
TERM
2.1 This Agreement shall be effective as of the date last signed and
shall continue in effect until December 31, 2003.
2.2 The provisions of Articles 3, 4, 5 and 6 of this Agreement shall
survive the termination of this Agreement and remain in full force and effect
thereafter.
ARTICLE 3
CONFIDENTIAL INFORMATION
3.1 Xxxxxxxx acknowledges that he holds certain "Confidential
Information" (as hereinafter defined) and may come into the possession of
Confidential Information during the term of this Agreement.
3.2 Xxxxxxxx agrees that he will not, and his employees, agents or
representatives will not, use, directly or indirectly, Confidential Information
for the benefit of any person (including without limitation, Xxxxxxxx'x
colleagues), entity or organization other than the Company, or disclose such
Confidential Information without the written authorization of the President of
the Company, either during or after the term of this Agreement, for as long as
such information retains the characteristics of Confidential Information.
3.3 "Confidential Information" means information not generally known,
including trade secrets, about the Company's methods, processes, technology,
intellectual property and products, including but not limited to information
relating to such matters as research and development, analysis, manufacturing
methods, patents, patent applications, Inventions, processes, techniques,
composition of materials, applications for particular technologies, materials or
designs, vendor names, customer lists, schematics, designs, drawings, management
systems and sales and marketing plans (including without limitation, information
related to the Assets acquired under the Purchase Agreement and Inventions (as
hereinafter defined)). All information disclosed to Xxxxxxxx, by the Company or
other third parties, or to which Xxxxxxxx possesses or has access or which is
generated by Xxxxxxxx on behalf of the Company prior to or during the term of
this Agreement which Xxxxxxxx has a reasonable basis to believe is Confidential
Information or which is treated by the Company as Confidential Information shall
be presumed to be Confidential Information. Confidential Information includes
all trade secrets and know-how relating to the Assets possessed by Xxxxxxxx
prior to the date of this Agreement or trade secrets and know-how that may in
the future be developed, acquired or made available to the Company.
3.4 The Company will rely heavily upon Xxxxxxxx'x integrity and prudent
judgment to use the Confidential Information only in the best interests of the
Company.
ARTICLE 4
INVENTIONS
4.l Xxxxxxxx agrees that all "Inventions" (as hereinafter defined)
which Xxxxxxxx (or any person, entity or organization hired by Xxxxxxxx) may
conceive or reduce to practice during the term of this Agreement and all
Inventions which Xxxxxxxx (or any person, entity or organization hired by
Xxxxxxxx) may conceive or reduce to practice which are based in whole or in part
upon Confidential Information possessed by Xxxxxxxx or obtained from the Company
shall be the exclusive property of, and are hereby assigned without charge to,
the Company unless released to Xxxxxxxx in writing by the President of the
Company. "Invention" shall mean any invention, discovery, work of authorship,
modification, improvement, enhancement, concept or idea, whether patentable or
not (including those which may be subject to trademark, copyright or mask work
registration) including
but not limited to products, technologies, machines, devices, instruments,
processes, methods, techniques, know-how and formulae which relate to the Assets
or Vessel/Septal Occluder Devices.
4.2 Xxxxxxxx shall (a) promptly and fully disclose and describe all
related Inventions in writing to an officer of the Company or anyone else
designated by the Company (such disclosure shall include, if requested, a
detailed report of the procedure employed and the results achieved by Xxxxxxxx);
and (b) give the Company all assistance the Company requires to perfect, protect
and use its rights to related Inventions, including but not limited to signing
all documents, doing all things and supplying all information that the Company
may deem necessary or desirable to (i) transfer or record the transfer to the
Company of the entire right, title and interest of Xxxxxxxx and/or Xxxxxxxx'x
employees in related Inventions, and (ii) enable the Company to obtain patent,
copyright, mask work or trademark protection for the Inventions anywhere in the
world. The obligations of this paragraph shall continue beyond the expiration or
termination of this Agreement with respect to related Inventions which Xxxxxxxx
and/or Xxxxxxxx'x employees, agents or representatives conceive or make during
the term of this Agreement.
ARTICLE 5
NON-COMPETE--RESTRICTIONS ON CERTAIN ACTIVITIES
5.1 Xxxxxxxx agrees that during the term of this Agreement, he shall
not, directly or indirectly:
A. Render any consulting, research, analytical, marketing,
developmental, or other services to any person, entity or organization with
respect to any product, device, instrument, process, technique, or project which
is substantially similar in function or purpose to the Assets acquired by the
Company under the Purchase Agreement relate, including the manufacture,
marketing and development of Vessel/Septal Occluder Devices or related
technology, products, instruments and devices;
B. Participate in the ownership, management, operation control or
financing of, or be connected as an investor, partner, officer, director,
principal, agent, representative, Xxxxxxxx or otherwise be associated with, or
permit his name to be used in connection with any business enterprise, wherever
located, which is engaged in the development of any product, device, instrument,
process, technique, or project which is substantially similar in function or
purpose to the Assets acquired by the Company under the Purchase Agreement
relate, including the development of Vessel/Septal Occluder Devices or related
technology, products, instruments and devices; or
C. Take any action which is designed, intended or might reasonably be
anticipated to compete with the Company's business or interfere with the
relationship of the Company and any of its customers or suppliers, whether
previously existing or acquired in connection with the Purchase Agreement.
5.2 If, in any judicial proceeding, a court shall refuse to enforce the
covenant not to compete because it is more extensive in scope than necessary to
effectuate the purposes of such
proceeding, such limitations shall be deemed reduced to the extent necessary to
permit enforcement of this covenant.
ARTICLE 6
GENERAL PROVISIONS
6.1 Xxxxxxxx and the Company's respective rights and obligations under
this Agreement are unconditional and shall survive and continue after any
expiration or termination of the Agreement, and shall bind the parties and their
respective legal representatives, heirs, successors and assigns.
6.2 In the event any provision of this Agreement is held unenforceable
by a court of competent jurisdiction, such provision shall be severed and shall
not affect the validity or enforceability of the remaining provisions.
6.3 This Agreement, as supplemented by the applicable terms of the
Purchase Agreement, constitutes the complete agreement and sets forth the entire
understanding and agreement of the parties as to the subject matter of this
Agreement and supersedes all prior discussions and understandings in respect to
the subject of this Agreement.
6.4 No modification, termination or attempted waiver of this Agreement,
or any provision thereof, shall be valid unless in writing signed by the party
against whom the same is sought to be enforced.
6.5 The waiver by the Company of a breach of any provision of this
Agreement by Xxxxxxxx shall not operate or be construed as a waiver of any other
or subsequent breach by Xxxxxxxx.
6.6 This Agreement may not be assigned by either party without the
prior written consent of the other party; provided, however, that the Agreement
shall be assignable by the Company without Xxxxxxxx'x consent in the event the
Company (i) is acquired by or merged into another corporation or (ii) sells its
assets related to its Vessel/Septal Occluder Device business. The benefits and
obligations of this Agreement shall be binding upon and inure to the parties
hereto, their successors and assigns.
6.7 Xxxxxxxx warrants that Xxxxxxxx has not previously assumed any
obligations inconsistent with those undertaken by Xxxxxxxx under this Agreement
6.8 The rights of the Company under this Agreement are in addition to
any rights of the Company with respect to the protection of trade secrets and
confidential information arising out of the common or statutory law of the State
of Minnesota, U.S.A. or the law of any state or country where Xxxxxxxx may from
time to time be employed or found.
6.9 Any notice required or permitted to be given under this Agreement
shall be sufficient if in writing and if sent by facsimile or by
certified/registered mail with return receipt requested to
the addresses set forth below. Notices shall be deemed given only upon receipt
(proof of receipt shall include the return receipt and the facsimile
transmission confirmation):
If to the Company: With a copy to:
Applied Biometrics, Inc. Xxxxxxxxx & Xxxxxx P.L.L.P.
000 X Xxxxxxx 00 0000 XXX Xxxxxx
Xxxxxxxxxx, XX 00000 00 Xxxxx Xxxxxx Xxxxxx
Telephone: 000-000-0000 Xxxxxxxxxxx, XX 00000
Fax No.: 000-000-0000 Attn: Xxxxxxx Xxxxxxx
Telephone: 000-000-0000
Fax No.: 000-000-0000
If to Xxxxxxxx:
Xx. Xxxxxx Xxxxxxxx
Xxxxxxxxx Xxxx x 00x
X 00000
Xxxxxxxxx, Xxxxxxx
Telephone: 000-00-00-000000
Fax No.: 000-00-0000-0000
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
day and year first above written.
APPLIED BIOMETRICS, INC.
By: /s/ Xxxxxx X. Xxxxxx
Xxxxxx X. Xxxxxx
Its: President
XX. XXXXXX XXXXXXXX
/s/ Xxxxxx Xxxxxxxx
Xxxxxx Xxxxxxxx
