EXHIBIT 10.46
TECHNOLOGY DEVELOPMENT AND LICENSE AGREEMENT
This Technology Development and License Agreement ("Agreement"), is
made and entered into as of October 23, 1999 (the "Effective Date"), by and
between LASERSIGHT TECHNOLOGIES, INC., a Delaware corporation ("LaserSight") and
QUADRIVIUM, L.L.C., an Arizona limited liability company ("Quadrivium").
WHEREAS, Quadrivium is developing proprietary technology for a corneal
reshaping procedure that achieves a refractive correction utilizing low levels
of infrared energy, such procedure is commonly referred to as photothermal
keratoplasty ("PTK");
WHEREAS, Quadrivium is the owner of the entire, right, title and
interest in and to certain U.S. letters patent, foreign patents and patent
applications, as identified on Schedule A attached hereto and made a part
hereof, pertaining to PTK (collectively, the "Licensed Patents");
WHEREAS, Quadrivium has certain know-how and confidential technical and
proprietary information directed to the Licensed Patents and PTK, as identified
on Schedule B attached hereto and made a part hereof (collectively, the "PTK
Technology");
WHEREAS, Quadrivium and LaserSight desire to enter into certain
agreements relating to the development, enhancement and refinement of the PTK
Technology;
WHEREAS, LaserSight desires to acquire a world-wide, exclusive license
to exploit the PTK Technology and the Licensed Patents in the ophthalmic field
(collectively, the "Licensed Technology"), in accordance with the terms and
conditions provided herein;
WHEREAS, Quadrivium is willing to grant such a license to LaserSight in
accordance with the terms and conditions provided herein;
NOW, THEREFORE, in consideration of the mutual promises and valuable
consideration set forth herein, the parties agree as follows:
1. Term. The term of this Agreement (the "Term") shall commence and be
effective as of the Effective Date and shall continue thereafter until the date
on which the last of the Licensed Patents expires, unless sooner terminated
pursuant to the terms of this Agreement.
2. Development of the PTK Technology.
2.1 Technical Feasibility Demonstration ("Phase I").
Commencing on the Effective Date and continuing immediately thereafter
for a period of 120 days (the "Phase I Determination Period"),
Quadrivium, Xxxxxx Xxxxxx, M.D. ("Yavitz") and Xxxxxxx Xxxxx, Ph.D.
("Xxxxx") shall continue and complete their research and development of
the Licensed Technology which shall include, without limitation, the
following activities:
(i) the manufacture of one or more prototype PTK systems;
(ii) performing animal eye experiments (both in vitro
and in vivo) together with pilot human eye experiments in at
least two sets of pre-clinical studies; and
(iii) the development of protocols and treatment
algorithms to determine dose/response behavior and to optimize
treatment parameters for correction of hyperopia and
presbyopia.
At the conclusion of the Phase I Determination Period,
LaserSight shall determine, in its sole discretion, whether the
Licensed Technology is capable of producing a commercially viable PTK
system. If LaserSight determines that the Licensed Technology is
capable of producing a commercially viable PTK system, the parties
shall proceed to Phase II (as described in Section 2.2), otherwise this
Agreement shall terminate in accordance with Section 6. The date on
which such determination is made by LaserSight shall be referred to
herein as the "Phase I Determination Date." Notwithstanding the
foregoing, LaserSight, in its sole discretion, shall have the option to
extend the Phase I Determination Period for an additional period not to
exceed 90 days to continue the Phase I development activities.
2.2 Additional Clinical Studies and Commercialization ("Phase
II"). Unless this Agreement is otherwise terminated in accordance with
Section 6, commencing on the Phase I Determination Date and continuing
thereafter until the Phase II Completion Date (as defined herein),
LaserSight, with assistance from Quadrivium, Yavitz and Xxxxx (which
Quadrivium, Yavitz and Xxxxx shall provide when reasonably requested by
LaserSight), shall conduct clinical studies of the PTK system in
Germany, Canada, Japan and other foreign countries that are reasonably
designated by LaserSight after consultation with Quadrivium.
The Phase II clinical studies shall be performed for the
purposes of (i) testing and refining the clinical protocols and
treatment algorithms on that number of international patients that is
established by LaserSight after consultation with Quadrivium, and (ii)
capturing necessary post-treatment follow-up data. The Phase II
clinical studies shall be conducted in accordance with the clinical
protocols developed during the Phase I development activities and such
other protocols which may be approved in writing by LaserSight.
Upon the completion of the Phase II clinical studies,
LaserSight may pursue regulatory approval for selling a PTK system in
such countries as LaserSight reasonably determines, and Quadrivium
shall assist LaserSight in any reasonable manner necessary for
LaserSight to receive such approval or approvals. The date on which
LaserSight, or its designee, commences commercial shipments of the PTK
system shall be referred to herein as the "Phase II Completion Date."
If upon completion of the Phase II clinical studies, LaserSight
determines, in its sole discretion, that the Licensed Technology is not
capable of producing a commercially viable PTK system, this Agreement
shall terminate in accordance with Section 6.
It is anticipated that if LaserSight commences commercial
shipments of a PTK system outside of the United States, then LaserSight
will pursue regulatory approval for a PTK system within the United
States. When requested by LaserSight, Quadrivium shall assist in any
reasonable manner necessary for LaserSight to receive such approval in
the United States.
2.3 PTK Technology Development Cost and Budget. Prior to the
expiration of the 30-day period immediately following the Effective
Date, Quadrivium shall present to LaserSight, for LaserSight's
approval, a detailed budget (the "Technology Development Budget") which
itemizes the resources to be expended during the Phase I and Phase II
clinical development activities and sets forth a timeline during which
such resources shall be expended. No material changes shall be made to
the Technology Development Budget without the prior written approval of
LaserSight and Quadrivium.
On a monthly basis during the Phase I and Phase II development
periods, as applicable, Quadrivium will submit a written notice to
LaserSight (each an "Advance Notice") that sets forth an itemized list
of expenses that will be incurred during the next month together with a
brief description of the anticipated timing and purposes of such
expenditures. Provided that such expenditures are reflected in the
Technology Development Budget and the advance limits described below
have not been exceeded, LaserSight shall pay to Quadrivium the amounts
requested in the Advance Notice within 15 business days of LaserSight's
receipt thereof. Quadrivium agrees to use any such payments made by
LaserSight for the purposes described in the relevant Advance Notice.
Notwithstanding anything set forth in this Agreement to the
contrary, in no event shall LaserSight be required to make advances to
Quadrivium which in the aggregate exceed (i) $300,000 for all costs and
expenses associated with the Phase I development activities, and (ii)
$2,000,000 for all costs and expenses associated with the Phase II
development activities.
Within 30 days after the end of each of LaserSight's fiscal
quarters during the Phase I and Phase II, if applicable, development
period, Quadrivium will provide LaserSight with an itemized statement
(the "Technology Development Reconciliation") setting forth the total
amounts LaserSight advanced pursuant to Advance Notices delivered
during the prior fiscal quarter in connection with the Phase I
development activities or Phase II development activities, as the case
may be, and a description of how such advances were utilized, together
with such other supporting documentation as may be reasonably requested
by LaserSight. Unless LaserSight disputes the amount reflected in the
Technology Development Reconciliation within 15 business days after
LaserSight's receipt thereof, all amounts reflected shall be deemed to
have been expended in accordance with the Technology Development
Budget. If it is determined that Quadrivium has made expenditures not
in accordance with the Technology Development Budget, Quadrivium shall
be required to reimburse LaserSight for any such amounts. Any dispute
arising in connection with any quarterly Technology Development
Reconciliation shall be resolved in accordance with the dispute
resolution procedures described in Section 4(b) of this Agreement.
3. Grant of License.
(a) Quadrivium hereby grants to LaserSight and its Affiliated
Companies (as defined herein) during the Term a world-wide, exclusive
right and license to exploit the Licensed Technology in the ophthalmic
field. As used herein, the term Licensed Technology shall include those
patents and patent applications listed on Schedule A, and any reissues,
reexaminations, divisionals, continuations, and continuations-in-part
thereof and any foreign counterparts thereof and all of the PTK
Technology identified on Schedule B from time to time. If subsequent to
the Effective Date, any of Quadrivium, or its members, officers, agents
or affiliates is issued a new patent or receives a license for a new
patent that relates to PTK Technology (other than the Licensed
Patents), Quadrivium shall notify LaserSight in writing of such patent.
For a period of 90 days from such notification, LaserSight shall have
the right to notify Quadrivium in writing that it intends to add such
patent to the list of Licensed Patents on Schedule A hereto. If
LaserSight elects to add such patent to the list of Licensed Patents,
the patent will be included in the license granted under this Agreement
without any additional compensation being due. Any such added patents
shall be deemed to be Licensed Patents for purposes of this Agreement.
(b) Upon the execution of this Agreement, Quadrivium shall
promptly disclose in writing and deliver to LaserSight all
information it possesses relating to the Licensed Technology.
(c) All past, present and future discoveries, inventions,
technology, know-how, enhancements, improvements, modifications or
other developments directly relating to the Licensed Technology and
PTK, whether or not patented or patentable in any country, shall be
promptly disclosed in writing to LaserSight by Quadrivium revising
Schedule B and providing a copy of such schedule to LaserSight, and
once such items are so disclosed, such items shall be deemed part of
the Licensed Technology owned by Quadrivium and licensed by LaserSight
under this Agreement. If LaserSight disagrees that items disclosed in
accordance with this Section 3(c) directly relate to PTK, then such
dispute shall be resolved in accordance with the dispute resolution
procedures described in Section 4(b) of this Agreement.
(d) Quadrivium further grants to LaserSight and any of its Affiliated
Companies the right to sublicense the Licensed Technology to Users (as
defined herein) under the exclusive license granted hereunder.
For purposes of this Agreement the term "Affiliated Companies" shall
mean any person or entity controlling, controlled by or under common
control with another person. For purposes of this definition, "control"
(including, with correlative meaning, the terms "controlled by" and
"under common control with"), as used with respect to any person or
entity, shall mean the possession, directly or indirectly, of the power
to direct and cause the direction of the management and policies of
such person or entity, whether through the ownership of voting
securities, by contract or otherwise. For purposes of this Agreement,
the term "Users" shall mean any party which utilizes any PTK Apparatus
(as defined herein).
4. Consideration.
(a) LaserSight Incorporated Common Stock. LaserSight shall issue
and deliver 200,000 shares of LaserSight Incorporated common stock, $.001 par
value per share ("Common Stock"), as follows:
(i) On the date this Agreement is signed by each of
the parties hereto, LaserSight shall send its transfer agent an
irrevocable letter of direction to issue two stock certificates each
representing 100,000 shares of Common Stock in the name of Quadrivium.
The certificates representing the shares of Common Stock issued in
accordance with this Section 4(a) (collectively, the "Quadrivium
Shares") shall be delivered to and held in escrow by LaserSight
Incorporated. The parties acknowledge and agree that during the period
the Quadrivium Shares, or any part thereof, are being held in escrow,
Quadrivium is entitled to (A) exercise any and all voting and other
consensual rights pertaining to the Quadrivium Shares or any part
thereof, and (B) receive and retain any and all dividends and other
distributions paid in respect of the Quadrivium Shares. The Quadrivium
Shares shall be released from escrow upon the occurrence of the events
described in Section 4(a)(ii) and (iii) below. The issuance of the
Quadrivium Shares shall be contingent on and subject to LaserSight's
receipt from Quadrivium and Yavitz and Xxxxx, as applicable, of (A)
stock powers duly executed by Quadrivium in blank, in form and
substance satisfactory to LaserSight (such stock powers will be held in
escrow by LaserSight Incorporated), (B) an Investors Certificate, the
form of which is attached hereto as Exhibit 1, and (C) a fully executed
Assignment of TradeMark Option Agreement whereby Quadrivium would grant
to LaserSight an option, during the 24-month period immediately
following the Effective Date, to acquire all right, title and interest
in and to the trademarks "The Best Value in Sight" and "NIR Vision
Correction", the form of which is attached hereto as Exhibit 2.
(ii) If (A) on the Phase I Determination Date LaserSight
determines, in its sole discretion, that the Licensed Technology is
capable of producing a commercially viable PTK system, or (B) on or
before the Phase I Determination Date Quadrivium exercises its right to
terminate this Agreement in accordance with Section 6.1(a), (c) or (f)
of this Agreement (in which case this Agreement shall terminate in
accordance with Section 6 hereof), LaserSight Incorporated, within five
business days of such determination or notice of such termination, as
applicable, shall release (X) 100,000 of the Quadrivium Shares to
Quadrivium if such release was triggered by events described in Section
4(a)(ii)(A) hereof, or (Y) all of the Quadrivium Shares if such release
was triggered by events described in Section 4(a)(ii)(B) above.
Alternatively, if (A) on the Phase I Determination Date
LaserSight determines, in its sole discretion, that the Licensed
Technology is not capable of producing a commercially viable PTK
system, or (B) on or before the Phase I Determination Date LaserSight
exercises its right to terminate this Agreement in accordance with
Section 6.1(a), (d) or (f) of this Agreement, this Agreement shall
terminate in accordance with Section 6 of this Agreement, and the
Quadrivium Shares shall be released from escrow and LaserSight
Incorporated is hereby directed to endorse the stock powers that
accompanied the Quadrivium Shares in order to transfer the ownership of
the Quadrivium Shares from Quadrivium to LaserSight Incorporated.
(iii) Within five business days after (A) the Phase II
Completion Date, or (B) the date on which Quadrivium provides notice to
LaserSight that Quadrivium is exercising its right to terminate this
Agreement in accordance with Section 6.1(a), (c) or (f) (in which case
this Agreement shall terminate in accordance with Section 6 hereof),
LaserSight Incorporated shall release the remaining Quadrivium Shares
to Quadrivium. If (A) upon completion of the Phase II clinical studies
it is determined by LaserSight that the international commercialization
of the PTK system is not viable, or (B) on or before the Phase II
Completion Date LaserSight exercises its right to terminate this
Agreement in accordance with Section 6.1(a), (d) or (f), this Agreement
shall terminate in accordance with Section 6 of this Agreement, and the
remaining Quadrivium Shares shall be released from escrow and
LaserSight Incorporated is hereby directed to endorse the stock powers
that accompanied the remaining Quadrivium Shares in order to transfer
the ownership of the Quadrivium Shares from Quadrivium to LaserSight
Incorporated.
(b) Royalty Payments. During the period commencing on the Phase
II Completion Date and continuing during the Term, LaserSight shall pay
Quadrivium: (i) a per procedure royalty equal to $35 (as adjusted pursuant to
this Section 4(b)) for each PTK procedure (the "Per Procedure Fee") that
substantially utilizes the PTK Technology in connection with the performance of
such procedure or is performed utilizing an infrared device (the "PTK
Apparatus") that is covered by the claims contained in the Licensed Patents and
manufactured by or for, and sold by, LaserSight; and (ii) a one time product
royalty (the "Product Royalty") in an amount equal to 10% of the sales price of
any PTK Apparatus that is sold by or on behalf of LaserSight, less bona fide
charges with respect to packaging, transportation, insurance, installation,
training, duties, commissions, taxes, discounts and allowance for returns. The
sales price shall not include the price of service contracts, replacement or
ancillary components that may be sold to LaserSight's customers from time to
time that are not themselves a PTK Apparatus. In addition, LaserSight shall not
be required to pay the Product Royalty for any PTK Apparatus that is placed in
service without any initial charge to the User. The Per Procedure Fee shall be
adjusted on the fourth anniversary of the Effective Date and every four years
thereafter to reflect the cumulative percentage increase or decrease in the
Consumer Price Index for All Urban Consumers (the "CPI-U") as published by the
Bureau of Labor Statistics or any successor thereto. Such cumulative percentage
increase or decrease in the CPI-U shall be (i) determined by using October 1999
as the base period, (ii) applied to the base amount of $35 to determine the
amount of increase or decrease, as applicable, to the Per Procedure Fee, and
(iii) added to or subtracted from, as applicable, $35.
Notwithstanding anything set forth in this Section 4(b) to the
contrary, if LaserSight is required to pay a royalty or other fee or assessment
to any third party as a result of LaserSight or a User performing PTK procedures
(collectively, a "Third Party Royalty"), the Per Procedure Fee shall be
decreased by the Reduction Amount (as defined herein). For purposes of this
Agreement, the "Reduction Amount" shall mean the amount resulting from
multiplying the Per Procedure Fee then in effect by a fraction (i) the numerator
of which shall be total amount of per procedure royalties (other than the Per
Procedure Fee) that LaserSight is required to pay as a result of its or a User's
performance of a PTK procedure, and (ii) the denominator of which shall be the
then current amount being charged by LaserSight to User's for each PTK procedure
that is performed using a PTK Apparatus. If LaserSight is required to pay a
Third Party Royalty which is not in the form of a per procedure fee, LaserSight
shall use it best efforts to convert the amount of such Third Party Royalty to a
per procedure fee for purposes of calculating the Reduced Amount.
LaserSight and Quadrivium acknowledge and agree that any amount paid by
LaserSight to any Affiliated Companies shall not be considered a Third Party
Royalty.
Any dispute, controversy or claim arising out of this Section 4(b), or
the breach hereof, that cannot be settled through negotiation shall be settled
(i) first, by the parties trying in good faith to settle the dispute by
mediation under the Commercial Mediation Rules of the American Arbitration
Association (the "AAA") (such mediation session to be held in Winter Park,
Florida, and to commence within 15 days of the appointment of the mediator by
the AAA), and (ii) second, by binding arbitration administered by the AAA under
its Commercial Arbitration Rules (such arbitration to be held in Winter Park,
Florida, and to commence within 15 days of the appointment of a single
arbitrator by the AAA), and judgment on the award rendered by the arbitrator may
be entered in any court having jurisdiction thereof.
(c) Terms of Payments. Within 45 days after the end of each of
LaserSight's fiscal quarters which commence after the Phase II Completion Date,
LaserSight will (i) provide Quadrivium with a statement setting forth the number
of PTK procedures that were performed utilizing a PTK Apparatus, and the number
of PTK Apparatus sold, during the prior fiscal quarter and cumulative for all
prior applicable periods, and (ii) deliver to Quadrivium, a LaserSight check in
the amount of the aggregate Per Procedure Fees and Product Royalties then due
with respect to the immediate prior quarter.
LaserSight shall keep, maintain and preserve during the Term, and for a
period of one (1) year immediately thereafter (or such longer time, if
applicable, until any existing dispute regarding the Per Procedure Fee and the
Product Royalty is finally resolved, without further right of appeal), books,
accounts, records and other materials used to calculate the royalty payments
described in Section 4(b) in a manner such that the information contained in the
statements referred to in this Section 5(b)Section 4(c) may be readily
determined. Quadrivium and/or its duly authorized representatives, shall have
the right to inspect and audit the books, accounts, records and other materials
used to calculate the royalty payments described in this Section 4(c) during
reasonable business hours and upon at least five business days notice by
Quadrivium and/or its representatives.
5. Restricted Shares. Quadrivium acknowledges and agrees that the
Quadrivium Shares (i) are authorized but previously unissued Common Stock
which have not been registered under the Securities Act of 1933, as amended
("the Act") or any state securities laws, (ii) have been acquired for
investment purposes and not with a view to distribution or resale, (iii)
may not be sold or transferred unless such shares have been registered under
the Act, or unless an exemption from registration is available, and (iv) the
certificates representing such shares shall bear substantially the following
legend:
THE SHARES OF COMMON STOCK REPRESENTED BY THIS CERTIFICATE
HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933, AS AMENDED
(THE "ACT"), OR ANY APPLICABLE STATE SECURITIES LAW AND MAY NOT BE
TRANSFERRED UNTIL (I) A REGISTRATION STATEMENT UNDER THE ACT AND SUCH
APPLICABLE STATE SECURITIES LAWS SHALL HAVE BECOME EFFECTIVE WITH
REGARD THERETO, OR (II) IN THE OPINION OF COUNSEL ACCEPTABLE TO THE
COMPANY, REGISTRATION UNDER SUCH SECURITIES ACTS AND SUCH APPLICABLE
STATE SECURITIES LAWS IS NOT REQUIRED IN CONNECTION WITH SUCH PROPOSED
TRANSFER.
The Quadrivium Shares have those registration rights that are more fully
described in that certain Registration Rights Agreement, dated as of the date
hereof, between Quadrivium and LaserSight Incorporated, the form of which is
attached hereto as Exhibit 3.
6. Termination.
6.1 Termination Events. During the Term, this Agreement may be
terminated as follows:
(a) Either party may terminate this Agreement upon the occurrence of
a default or material breach of the terms hereof by the other party,
provided that such right to terminate may not be exercised unless such
default or breach has not been cured within 10 days after written
notice of such default or breach has been supplied to the defaulting or
breaching party.
(b) This Agreement shall terminate as of the Phase I Determination
Date or the Phase II Completion Date if LaserSight determines, in its
sole discretion, that the Licensed Technology is not capable of
producing a commercially viable product.
(c) Provided that there is no current dispute relating to a
quarterly Technology Development Reconciliation that is in the process
of being resolved in accordance with the terms of this Agreement, this
Agreement may be terminated by Quadrivium, if LaserSight fails to make
any advances as contemplated by the Technology Development Budget and
required in accordance with Section 2.3 hereof, and such failure has
not been cured within 10 days after written notice of such failure has
been supplied to LaserSight by Quadrivium.
(d) LaserSight may terminate this Agreement if any of Quadrivium,
Yavitz or Xxxxx fails to assist in the Phase I or Phase II studies as
contemplated by this Agreement.
(e) This Agreement may be terminated at any time by mutual agreement
of the parties.
(f) If either party goes into liquidation, has a receiver appointed
for all or any portion of its property or estate, is adjudged bankrupt
or insolvent, files a voluntary petition of bankruptcy, has a petition
in bankruptcy filed against it or makes an assignment for the benefit
of its creditors, and whether any such event is the outcome of the
voluntary act of such party or otherwise, the other party, at its
option, may terminate this Agreement immediately by providing notice of
such termination.
6.2 Obligations Upon Termination. Upon termination of this
Agreement neither party shall have any further obligation to the other
under this Agreement except for (i) obligations accruing prior to the date of
termination; and (ii) obligations, promises or covenants in this
Agreement which are expressly intended to extend beyond the term of this
Agreement. Quadrivium acknowledges and agrees that the term of any sublicense
which has been granted by LaserSight or any of its Affiliated Companies to a
User shall not terminate upon the termination of this Agreement, but
rather, the term of any such sublicense shall continue in accordance with the
terms and conditions set forth in such sublicense.
6.3 Rights to Future Developments. If after the termination of
this Agreement for any reason, Quadrivium intends to (i) grant a license
covering the Licensed Technology in the ophthalmic field to any third party, or
(ii) exploit the Licensed Technology for its own benefit, Quadrivium shall give
written notice to LaserSight of its intention to grant such license (the "Grant
Notice") or to exploit the Licensed Technology (the "Exploitation Notice"). The
Grant Notice, in addition to stating the fact that Quadrivium intends to grant
the license shall state (i) that the notice is being given as required by this
Agreement, (ii) the nature of the license to be granted, (iii) the name,
occupations and business and residence addresses of the proposed licensee, and
(iv) a brief description of the terms and conditions under which the license is
to be granted. The Exploitation Notice shall describe the manner in which
Quadrivium intends to exploit the Licensed Technology. Upon receipt of the Grant
Notice or the Exploitation Notice, LaserSight for a period of 30 days, may
exercise an option to enter into a license agreement with Quadrivium for a term
which shall expire on the date of the last to expire of the Licensed Patents and
upon the same terms and conditions as described in this Agreement. The
obligations of Quadrivium described in this Section 6.3 shall survive the
termination of this Agreement, and this Agreement shall inure to the benefit of
and be binding on any successor or assign of the Licensed Technology. Quadrivium
shall require any successor (whether direct or indirect, by reason of a
purchase, merger, consolidation, or otherwise) to the Licensed Technology to
expressly assume and agree to perform this Agreement in the same manner and to
the same extent that Quadrivium is required to perform under this Agreement.
7. Representations and Warranties.
(a) Quadrivium. Quadrivium represents, warrants and covenants:
(i) that it is the sole and exclusive owner of
the Licensed Technology and that it has full
legal capacity, power and authority to (A)
enter into this Agreement, (B) fully perform
all of its obligations hereunder, and (C)
grant the license concerning the Licensed
Technology to LaserSight;
(ii) that to its knowledge all of the Licensed
Technology known to it has been or will be
promptly disclosed and delivered to
LaserSight and included in the license
granted hereunder;
(iii) that it shall maintain accurate logs and
records of technical information concerning
the Licensed Technology and any developments, enhancements
or refinements thereof. Upon request by LaserSight,
Quadrivium shall provide access to or copies
of such logs and records to LaserSight;
(iv) that Schedule A represents a complete and
accurate list of all jurisdictions and registration
numbers related to such jurisdictions where those
patents owned by or licensed to Quadrivium that
pertain to PTK have been registered, and there are no
other jurisdictions where such patents have
been registered or an application for
registration has been made;
(v) that Schedule B represents a complete and accurate
list of all PTK Technology and that Quadrivium shall
update Schedule B from time to time to reflect additional
developments, enhancements or refinements to the PTK
Technology.
(vi) it has not previously licensed or used the
Licensed Patents or any part thereof anywhere in
the world, and will not do so during the Term; provided
that nothing contained herein shall preclude Quadrivium
from licensing the Licensed Patents for uses other than in
the ophthalmic field;
(vii) it has not licensed, used or disclosed
(except for disclosure to those parties identified on
Schedule C hereto, which parties have entered into a
valid, binding and enforceable agreement with Quadrivium
not to disclose the PTK Technology to any third party or
use the PTK Technology for its own or any third party's
commercial advantage or otherwise) the PTK Technology
or any part thereof anywhere in the world, and will not do
so during the Term;
(viii) that to its knowledge no part of the Licensed
Technology is being infringed anywhere in the world;
(ix) that to its knowledge each of the Licensed
Patents are valid and enforceable, and that to its
knowledge neither LaserSight's practice of the Licensed
Technology as contemplated by this Agreement nor any part
of the Licensed Technology will infringe the rights of any
third parties; and
(x) Yavitz and Xxxxx are the owners of all of the
membership interests of Quadrivium that are currently
issued and outstanding and there are no outstanding
options, rights or commitments of any kind relating to
membership interests in Quadrivium.
(b) LaserSight. LaserSight represents, warrants and covenants:
(i) that it has the full legal power and
authority to enter into this Agreement and to fully
perform all of its obligations hereunder; and
(ii) that its performance hereunder will comply with all
applicable laws, ordinances, regulations and codes.
8. Maintenance of the Licensed Patents. Quadrivium shall be
obligated to pay all fees and costs necessary to maintain the Licensed Patents
in the United States, as applicable, for the respective full term of each
Licensed Patent. If Quadrivium is unwilling to pay all fees and costs necessary
to maintain the Licensed Patents in the United States, as applicable, LaserSight
shall have an option to pay such costs and make such payments. If LaserSight
exercises its option to make such payments Quadrivium agrees to assign to
LaserSight all of Quadrivium's right, title and interest in each such Licensed
Patent in the ophthalmic field, and LaserSight may deduct the amount of such
payments from amounts, if any, which have accrued prior to such assignment and
are payable to Quadrivium pursuant to this Agreement.
9. Additional Filings; Approvals . If LaserSight (i) desires to
obtain patent protection relating to any further discoveries, inventions,
technology, know-how, enhancements, improvements, modifications or other
developments relating to the Licensed Technology in any country where such
patent protection may be granted and has not been granted as of the Effective
Date, or (ii) is required to file with any governmental or other licensing
agency any form or application related to the Licensed Technology, Quadrivium,
without additional consideration, shall provide all assistance reasonably
necessary to enable LaserSight to obtain such regulatory approval, licensing
approval or patent protection, as the case may be. The costs of obtaining all
relevant approvals or protection shall be borne solely by LaserSight.
10. Patent Enforcement/Defense.
10.1 Enforcement. Upon learning of the infringement of any of
the Licensed Patents in the ophthalmic field by third parties, each
party shall inform the other in writing of that fact, and shall supply
the other with any evidence available pertaining to the infringement.
LaserSight may, at its own discretion and at its own expense, take
whatever steps are necessary to stop the infringement of said Licensed
Patent in the ophthalmic field and, with respect to said Licensed
Patent which LaserSight is enforcing, LaserSight shall have the sole
right to recover damages and/or settlement proceeds from the resolution
of such an infringement claim; provided, however, that notwithstanding
anything to the contrary herein that in any enforcement action brought
by LaserSight involving its rights under this Agreement, Quadrivium and
such other person having rights in the Licensed Patents, shall in its
sole discretion, be entitled to enter such action as a third party and
defend any counterclaims, cross claims or other claims in connection
with the validity or enforcement of the Licensed Patents. If Quadrivium
or such other party having rights in the Licensed Patents elects to
enter such action, Quadrivium or such other party shall pay all of its
legal costs and expenses, including attorneys' fees and costs and
experts' fees in connection with the patent enforcement or validity
issues. LaserSight will not compromise or settle any claim, action or
proceeding involving the Licensed Patents, where such action would
impact the validity or enforceability of the Licensed Patents, without
the prior written approval of Quadrivium and such other person having
rights in the Licensed Patents, which approval shall not be
unreasonably withheld. This Section 10.1 shall survive expiration or
other termination, for any reason, of this Agreement.
10.2 Quadrivium as Party. In the event of the initiation of
legal proceedings under Section 10.1, Quadrivium or Quadrivium's
assignee of the applicable Licensed Patent, at LaserSight's request and
at LaserSight's expense, shall agree to become a named party in such
litigation if, in LaserSight's sole discretion and opinion, Quadrivium
or Quadrivium's assignee's appearance in such action is necessary and
prudent to adjudicate the disputed rights in such action. In the event
Quadrivium or Quadrivium's assignee appears in such action pursuant to
this Section 10.2, LaserSight shall indemnify Quadrivium and
Quadrivium's assignee for all reasonable attorney fees paid by
Quadrivium or Quadrivium's assignee for attorneys chosen by Quadrivium
and Quadrivium's assignee, in its own discretion.
10.3 Patent Defense. Should any litigation by a third party
against LaserSight alleging that LaserSight's or any User's practice of
the Licensed Technology as contemplated by this Agreement or the
manufacture, use or sale of the PTK system infringes any patent or
rights under a patent of such third party arise, LaserSight shall
promptly notify Quadrivium of such litigation, and LaserSight shall
defend and/or settle such litigation at its sole cost and expense. If
requested by LaserSight, Quadrivium shall, and Quadrivium shall cause
its officers, members, employees and agents to, cooperate and
participate with LaserSight in such litigation.
11. Confidentiality. LaserSight and Quadrivium shall not, and shall
not permit their respective officers, employees or affiliates to, make any
disclosures concerning this Agreement until such time as the parties have
mutually agreed upon the language and timing of a press release or until such
time as LaserSight determines, based on advice of counsel, that a public
announcement is required by law, in which case LaserSight may make a public
announcement.
12. Nondisclosure of Confidential Information. Each of
Quadrivium, Yavitz and Xxxxx acknowledge and agree that they may have access to
LaserSight's and its affiliates' confidential business plans, patents,
copyrights, trademarks, tradenames, trade secrets, methods of operations,
performance standards, pricing policies, marketing strategies, records and other
information about LaserSight's and its affiliates' operations and business of a
confidential
nature (collectively, the "Confidential Information"), and none of Quadrivium,
Yavitz or Xxxxx shall in any manner, directly or indirectly, disclose or divulge
the Confidential Information to any other person, firm, corporation or other
third party, whether directly or indirectly, in competition with LaserSight for
any use or purpose, except as required by law or with the prior express written
authorization of LaserSight.
The parties agree that the Confidential Information may be disclosed to
Quadrivium's directors, officers, managers, members, employees or agents who
need to know such information solely for purposes of performing Quadrivium's
obligations under this Agreement (it being agreed that such directors, officers,
managers, members, employees and agents shall be informed by Quadrivium of the
confidential nature of the Confidential Information and that by receiving such
information such parties are agreeing to be bound by the terms of this Section
12).
13. Independent Contractor. This Agreement does not in any way
create the relationship of principal and agent or employer and employee between
Quadrivium and LaserSight, and under no circumstances shall LaserSight be
considered to be the agent or employee of Quadrivium. Neither party shall act or
attempt to act, or represent itself directly or by implication, as agent or
employee of the other party or in any manner assume or create, or attempt to
assume or create, any obligation on behalf of or in the name of the other party
and will not make any representations, guarantees or warranties on behalf of, or
in the name of the other party with respect to the Licensed Technology.
14. Notice. Any notice or other communication required or
permitted hereunder shall be deemed given on the date delivered if delivered
personally or by facsimile with proper evidence of transmission, or five days
after deposit in the United States mail, by registered or certified mail,
postage prepaid, addressed:
If to Quadrivium:
Quadrivium, L.L.C.
000 Xxxxxxxxxxxx Xxxx
Xxxxx 000
Xxxxxxxx, Xxxxxxxx 00000
Attention: Xxxxxx Xxxxxx, M.D.
Facsimile: (000) 000-0000
If to LaserSight:
LaserSight Technologies, Inc.
0000 Xxxxxxxxxx Xxxxxxxxx
Xxxxx 000
Xxxxxx Xxxx, Xxxxxxx 00000
Attention: President
Facsimile: (000) 000-0000
With a copy to:
The Lowenbaum Partnership, LLC
000 Xxxxx Xxxxxxx Xxxxxx
Xxxxx 000
Xx. Xxxxx, Xxxxxxxx. 00000
Attention: Xxxxxxx X. Xxxxxxx, Esq.
Facsimile: (000) 000-0000
15. Waiver. Neither waiver by either party of any breach or
default under this Agreement by the other party, nor the failure of either party
to exercise promptly its rights in the event of such breach or default, shall be
construed as a waiver of any subsequent breach or default or of any term,
condition or provision of this Agreement.
16. Attorneys Fees. In the event that either party incurs costs
and fees, including attorneys' fees, in enforcing its or their rights under this
Agreement, the party substantially prevailing in any suit or action, including
any appeal, shall be entitled to recover from the other such costs and
attorneys' fees.
17. Severability. Each provision hereof is intended to be severable
and the invalidity or illegality of any portion of this Agreement shall not
affect the validity or legality of the remainder hereof.
18. Governing Law. The validity, formulation, interpretation
and performance of this Agreement shall be governed by the laws of the State of
Florida, without giving effect to choice of law principles. The parties do
hereby irrevocably submit themselves to the personal jurisdiction of the United
States District Court for the Middle District of Florida and do hereby
irrevocably agree to service of such court's process upon them.
19. Entire Agreement. This Agreement, including the schedules
and exhibits hereto, which are incorporated herein by this reference, represent
the entire agreement between the parties hereto with respect to the subject
matter hereof, and supersedes all prior or contemporaneous understandings
between the parties. This Agreement may not be amended, supplemented or modified
except by a subsequent written agreement signed by both parties hereto.
20. Assignment. Neither this Agreement nor any rights hereunder
or interest herein may be assigned by either party without the prior specific
written consent of the other party.
21. Counterparts. This Agreement may be executed in one or
more counterparts, each of which shall be deemed an original and all of which
shall be deemed one and the same instrument.
22. Captions. The captions contained herein are intended
for convenience of reference only and shall not be used to interpret any of the
terms or provisions hereof.
23. Additional Documents. The parties hereto agree to
execute, acknowledge and deliver such further documents as may be necessary or
proper to carry out the purpose and intent of this Agreement.
24. Availability of Personnel. Quadrivium agrees to make the
services of Xxxxx available to LaserSight and Quadrivium acknowledges and agrees
that Xxxxx'x performance of his obligations under this Agreement will not
violate the terms and conditions of that certain Consulting Agreement dated
March 17, 1997 between Quadrivium and Antropix Corporation. Xxxxx and Yavitz
agree that they each shall take all actions reasonably necessary to assist
Quadrivium in satisfying its obligations under this Agreement.
25. Obligations Upon the Occurrence of a Change in Control. If prior
to the Phase I Determination Date or the Phase II Completion Date a Change of
Control (as defined herein) occurs, and after the Change of Control is effected,
LaserSight or its successor, as the case may be, shall materially breach its
obligations hereunder, and if such breach is not cured within 30 days after
written notice of such breach from Quadrivium to LaserSight or its successor, as
the case may be, then the Quadrivium Shares that have not been released from
escrow in accordance with the terms and conditions of Section 4(a), shall be
immediately delivered to Quadrivium.
For purposes of this Agreement "Change of Control" shall mean:
(i) the acquisition by any person or entity of 80% or more of the
then-outstanding Common Stock; provided, however, that no Change of Control
shall occur solely by reason of any such acquisition by a corporation with
respect to which, after such acquisition, more than 60% of the then-outstanding
common shares of such corporation are then beneficially owned, directly or
indirectly, by the persons who were the beneficial owners of the Common Stock
immediately before such acquisition in substantially the same proportions as
their respective ownership, immediately before such acquisition, of the
then-outstanding Common Stock; or (ii) approval by the stockholders of
LaserSight Incorporated of a merger, reorganization or consolidation
("Transaction") with respect to which persons who were the respective beneficial
owners of the Common Stock immediately before the Transaction do not,
immediately thereafter, beneficially own, directly or indirectly, more than 60%
of the then-outstanding common shares of the corporation resulting from the
Transaction.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
QUADRIVIUM, L.L.C. LASERSIGHT TECHNOLOGIES, INC.
By: /s/Xxxxxx Xxxxxx, M.D. By: /S/Xxxxxxx X. Xxxxxx
------------------------------- -------------------------------
Its: President Its: Chief Executive Officer
------------------------------- -------------------------------
Solely for the purpose of acknowledging
their respective obligations pursuant to
Sections 2.1, 2.2, 12 and 24 of this Agreement:
/s/Xxxxxxx Xxxxx
-------------------------------------
Xxxxxxx Xxxxx
/s/Xxxxxx Xxxxxx
-------------------------------------
Xxxxxx Xxxxxx
SCHEDULE A
----------
Licensed Patents
----------------
Patent/Patent Application Description
------------------------- -----------
U.S. Patent No. 5,820,624 System for altering corneal
tissue
U.S. Patent Application No. 09/364,955 Disposable light source for
photothermal treatment of
human tissue
U.S. Patent Application No. 09/078,368 System for altering tissue
beneath an outer layer of
tissue
U.S. Patent Application (being prepared) System for infrared molding
of the cornea
SCHEDULE B
----------
Last Updated on: 10/22/99
--------
PTK Technology
--------------
1. U.S. Patent No. 5,820,624.
2. Method and apparatus disclosed in patent application titled "Disposable
Light Source for Photothermal Treatment of Human Tissue" related to a
non-laser infrared energy source for shrinking corneal tissue either
under a "LASIK" flap or through deuterium-treated epithelium.
3. All proprietary technical information included in the "Shaper
Vision" Business Plan provided to LaserSight in August 1999.
SCHEDULE C
----------
Parties to Which PTK Technology Has Been Disclosed
1. Alcon received a copy of U.S. Patent No. 5,820,624.
2. Xxxxxxx & Xxxxxxx received a copy of U.S. Patent No. 5,820,624 and
participated in a meeting in Jacksonville, Florida.
3. CIBAVISION received a copy of U.S. Patent No. 5,820,624 and mention of
non-laser light source without specifics.
