SOFTWARE LICENSE AGREEMENT
THIS SOFTWARE LICENSE AGREEMENT (this "AGREEMENT") is made this 29th day
of June, 2003 (the "EFFECTIVE DATE"), by and between GENERAL ELECTRIC COMPANY,
acting through and on behalf of its GE Medical Systems business ("GEMS"), and
POSITRON CORPORATION ("LICENSEE").
RECITALS
WHEREAS, Licensee assigned, sold, transferred and conveyed to GEMS all
right, title and interest in and to certain Cardiac PET software under the terms
of that certain Technology Purchase Agreement of even date herewith (the
"PURCHASE AGREEMENT");
WHEREAS, as part of the transactions contemplated by the Purchase
Agreement, the parties desire for Licensee to receive an irrevocable, license
from GEMS to continue using, modifying, distributing and otherwise exploiting
that Cardiac PET softwarein perpetuity; and
WHEREAS, GEMS is willing to grant such license under the terms and
conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants contained
herein, the parties agree as follows:
AGREEMENT
1. DEFINITIONS: Each of the following terms shall have the meaning set forth
below:
1.1 "DOCUMENTATION" means the documentation reasonably necessary to
utilize the Software effectively in accordance with the terms and conditions of
this Agreement. Documentation shall include, without limitation, such documents
and manuals that collectively contain a complete description and definition of
all Software operations and all user guides necessary for the operation and
management of the Software in the appropriate language(s) and formats, including
design documents and test plans.
1.2 "END USER" means any Licensee customer who is permitted to use the
Software under an agreement with Licensee.
1.3 "EXECUTABLE CODE" means the fully compiled version of a software
program that can be executed by a computer and used by an end user without
further compilation.
1.4 "SOFTWARE" means the current version only (as of the Effective
Date) of the Cardiac PET software that Licensee assigned, sold, transferred and
conveyed to GEMS under the Purchase Agreement, in Executable Code and in Source
Code formats, along with its associated
Documentation. For the avoidance of doubt, the parties intend for the term
"Software" to include (without limitation) all of the assets transferred to GEMS
under the Purchase Agreement.
1.5 "SOURCE CODE" means the human-readable version of a software
program that can be compiled into Executable Code.
1.6 "UPDATE" means a revision to the Software that GEMS provides to
comply with FDA regulations and safety requirements.
2. TERM.
2.1 TERM. The term of this Agreement will begin on the Effective Date
and will continue in perpetuity.
2.2 NO TERMINATION. This Agreement shall be perpetual and irrevocable.
In no event will either party have the right to terminate this Agreement or the
licenses granted herein. GEMS expressly covenants and agrees that it shall not
take any action, and shall not attempt in any way, to revoke, cancel, terminate
or otherwise refute the license to Licensee under this Agreement.
3. LICENSE.
3.1 GRANT OF LICENSE. GEMS hereby grants to Licensee a worldwide,
perpetual, irrevocable, non-exclusive, royalty-free, transferable, sublicensable
and fully paid-up license to use, reproduce, make derivative works of,
distribute and otherwise commercially exploit the Software.
3.2 RESTRICTIONS. Licensee acknowledges that both the Source Code of
the Software and any non-public information regarding the structure or
organization of the Software constitute valuable trade secrets of GEMS.
Accordingly, Licensee agrees to keep secure and not to disclose, disseminate or
otherwise make available to any third party other than under a confidentiality
agreement with restrictions at least as strict as those set forth in this
Agreement (a) the Source Code of the Software (excepting the Source Code already
disclosed to Hadassha Hospital Hospital in Jerusalem, Israel, prior to the
Effective Date), (b) any non-public information regarding the structure or
organization of the Software. For the avoidance of doubt, the parties understand
and agree that violations of any of these restrictions shall not give rise to
any right to terminate, cancel or revoke any of the license rights granted in
Section 3.1.
4. SUPPORT.
All support services, including without limitation installation,
training, service or other
support services for Licensee's customers, are the sole obligation of Licensee.
GEMS shall have no support obligations, including without limitation
installation, training, service or other support services, to Licensee or any
other party under this Agreement.
5. CONSIDERATION.
The licenses granted by GEMS to Licensee under this Agreement are partial
consideration for the assignment, sale, transfer and conveyance by Licensee to
GEMS of all right, title and interest in and to the Software under the Purchase
Agreement. The parties hereto acknowledge the adequacy and sufficiency of such
consideration.
6. DISCLAIMER.
GEMS MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, REGARDING THE
SOFTWARE AND DOCUMENTATION, INCLUDING ANY WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, TITLE AND NON-INFRINGEMENT OF THIRD PARTY RIGHTS.
LICENSEE ACKNOWLEDGES THAT IT HAS RELIED ON NO WARRANTIES OTHER THAN THE EXPRESS
WARRANTY IN THIS SECTION 6.
7. LIMITATIONS ON LIABILITY.
IN NO EVENT WILL GEMS BE LIABLE FOR ANY CONSEQUENTIAL, INDIRECT,
EXEMPLARY, SPECIAL OR INCIDENTAL DAMAGES, INCLUDING ANY LOST DATA OR LOST
PROFITS, ARISING FROM OR RELATING TO THIS AGREEMENT. LICENSEE ACKNOWLEDGES THAT
THE CONSIDERATION PROVIDED IN CONNECTION WITH THIS AGREEMENT REFLECTS THE
ALLOCATION OF RISK SET FORTH IN THIS AGREEMENT AND THAT GEMS WOULD NOT ENTER
INTO THIS AGREEMENT WITHOUT THESE LIMITATIONS ON ITS LIABILITY.
ALL DAMAGES FOR WHICH LICENSEE IS LIABLE UNDER THIS AGREEMENT WILL BE
SUBJECT TO THAT CERTAIN DOLLAR LIMITATION SET FORTH IN SECTION 6.06 OF THE
PURCHASE AGREEMENT.
8. PROPRIETARY RIGHTS AND CONFIDENTIAL INFORMATION.
8.1 PROPRIETARY RIGHTS.
(A) GEMS. All rights, title and interest in and to the
Software, Documentation and Updates, if any, and all worldwide intellectual
property rights therein, are the exclusive property of GEMS. Furthermore, all
rights, title and interest in and to any modification or other derivative work
of the Software developed or otherwise created by or on behalf of
GEMS, and all worldwide intellectual property rights therein, will be the
exclusive property of GEMS. All rights in and to the Software not expressly
granted to Licensee in this Agreement are reserved by GEMS.
(B) LICENSEE. As between Licensee and GEMS, all rights, title
and interest in and to any modification or other derivative work of the Software
developed or otherwise created by or on behalf of Licensee after the Effective
Date, and all worldwide intellectual property rights therein, will be the
exclusive property of Licensee.
8.2 CONFIDENTIALITY OF AGREEMENT. Neither party will disclose any
terms of this Agreement to anyone other than its affiliates, attorneys,
accountants, and other professional advisors except (a) as required by law or
(b) pursuant to a mutually agreeable press release or (c) in connection with a
contemplated transfer of such party's business and this Agreement permitted by
Section 11.6 (Assignment), provided that any third party to whom the terms of
this Agreement are to be disclosed signs a confidentiality agreement reasonably
satisfactory to the other party.
9. AGREEMENT MANAGER; NOTICES.
9.1 MANAGERS. Each party shall appoint an agreement manager as the
point of contact for all matters relating to the performance of this Agreement.
Licensee' agreement manager shall be XXXX XXXXXX, or such person's replacement,
and GEMS's agreement manager shall be XXXXXX XXXXX, or such person's
replacement.
9.2 NOTICE. Any notice required under this Agreement shall be sent by
fax (with the original to promptly follow by applicable national mail service or
a nationally recognized overnight courier), by a nationally recognized overnight
courier. Notices will be deemed given on the date delivered to the recipient if
sent by fax or overnight courier (it being agreed that the sender shall retain
proof of transmission or delivery, as the case may be). Notices shall be sent to
the persons identified below (or as otherwise directed in writing by a party):
Licensee: Positron Corporation
0000 Xxxxxxx Xxxxx Xxxxx #000
Xxxxxxx, Xxxxx 00000
Attn: Xx. Xxxx Xxxxxx, President
GEMS: GE Medical Systems
X.X. Xxx 000
Xxxxxxxxx, XX 00000
Attention: General Counsel, W-700
Fax: ______________
A party may change its address or addresses set forth above by giving the other
party notice of the change.
10. DISPUTE RESOLUTION.
10.1 Any dispute, controversy or claim arising out of or relating to
this Agreement or any related agreement or the validity, interpretation, breach
or termination thereof (a "DISPUTE"), including claims seeking redress or
asserting rights under applicable law, shall be resolved in accordance with the
procedures set forth herein. Until completion of such procedures, no party may
take any action not contemplated herein to force a resolution of the Dispute by
any judicial or similar process, except to the limited extent necessary to; (i)
avoid expiration of a claim that might eventually be permitted hereby; or (ii)
obtain interim relief, including injunctive relief, to preserve the STATUS QUO
or prevent irreparable harm.
10.2 In connection with any Dispute, the parties expressly waive and
forego any right to trial by jury.
10.3 Any Dispute will be resolved first through good faith negotiations
between the agreement managers, or as necessary the team leader of Licensee and
the executive of GEMS having responsibility for the sale or use of the Software
involved.
10.4 If within sixty (60) calendar days the parties are unable to
resolve the Dispute through good faith negotiation, either party may submit such
Dispute for resolution by mediation pursuant to the Center for Public Resources
Model Procedure for Mediation of Business Disputes as then in effect. The
mediation shall be conducted in New York City. Mediation will continue for at
least thirty (30) calendar days unless the mediator chooses to withdraw sooner.
At the request of either party, the mediator will be asked to provide an
evaluation of the Dispute and the parties' relative positions. Each party shall
bear its own costs of mediation effort.
10.5 After completion of any mediation effort, a party may submit the
Dispute for resolution by arbitration pursuant to the Non-Administered
Arbitration Rules of the Center for Public Resources as in effect on the
Effective Date, unless the parties agree to adopt such rules as in effect at the
time of the arbitration. The arbitral tribunal shall be composed of one
arbitrator; and the arbitration shall be conducted in New York City. If the
answer to the Dispute is not found within the terms of this Agreement, the
arbitrator shall determine the Dispute in accordance with the governing law of
this Agreement, without giving effect to any conflict of law rules or other
rules that might render such law inapplicable or unavailable. The prevailing
party in any arbitration conducted under this Section 10.5 shall be entitled to
recover from the other party (as part of the arbitral award or order) its
reasonable attorneys' fees and other costs of arbitration.
10.6 The law applicable to the validity of this arbitration provision,
the conduct of the arbitration, the challenge to or enforcement of any arbitral
award or order or any other question of arbitration law or procedure shall be
governed exclusively by the Federal Arbitration Act, 9 U.S.C. sections 1-16;
however, the award can be modified or vacated on grounds cited in the Federal
Arbitration Act or if the arbitrator's findings of facts are not supported by
substantial evidence or the conclusions of law are erroneous under the laws of
the State of New York. The parties agree that the federal and state courts
located in the State of New York shall have exclusive jurisdiction over any
action brought to enforce this arbitration provision, and each party irrevocably
submits to the jurisdiction of said courts. Notwithstanding the foregoing
sentence, either party may apply to any court of competent jurisdiction,
wherever situated, for enforcement of any judgment on an arbitral award.
10.7 Each party hereby consents to a single, consolidated arbitration
proceeding of multiple claims, or claims involving more than two parties. The
prevailing party or parties in any arbitration conducted under this paragraph
shall be entitled to recover from the other party or parties (as part of the
arbitral award or order) its or their reasonable attorneys' fees and other
reasonable costs of arbitration.
11. MISCELLANEOUS.
11.1 GOVERNING LAW. The parties expressly acknowledge that the laws of
the state of New York, except its conflict of law rules, will govern this
Agreement and any Dispute hereunder.
11.2 ENTIRE AGREEMENT. This Agreement and the Attachments attached
hereto are the complete and exclusive statement of the terms of the contract
between the parties. It may be modified only in writing signed by both parties.
No prior proposals, statements, course of dealing or usage of the trade will be
part of this Agreement.
11.3 HEADINGS. The headings in this Agreement are for purposes of
convenience and
ease of reference only and shall not be construed to limit or otherwise effect
the meaning of any part of this Agreement.
11.4 WAIVER. Any waiver of a breach of this Agreement must be in
writing and signed by the injured party. The failure of either party to enforce
any provision of this Agreement shall not be construed to be a waiver of such
provision, nor in any way to affect the validity of this Agreement or any part
hereof or the right of any party thereafter to enforce each and every such
provision.
11.5 SEVERABILITY. Wherever possible, each provision of this Agreement
shall be interpreted in such manner as to be effective and valid under
applicable law. However, if any one or more of the provisions shall, for any
reason, be held to be invalid, illegal or unenforceable in any respect, such
provision shall be ineffective to the extent, but only to the extent, of such
invalidity, illegality or unenforceability without invalidating the remainder of
such invalid, illegal or unenforceable provision or provisions or any other
provisions hereof, unless such a construction would be unreasonable.
11.6 ASSIGNMENT. This Agreement is personal to the parties and shall
not be assignable by either party without the prior written consent of the other
party. Notwithstanding the foregoing, GEMS may assign its rights and obligations
under this Agreement without Licensee's consent (a) to an affiliate of GEMS or
(b) incident to the transfer of all or substantially all of its business, and
Licensee may assign its rights and obligations under this Agreement to any
purchaser of all or substantially all its business related to the Software. This
Agreement shall be binding upon and shall inure to the benefit of the parties
hereto and their respective heirs, successors and permitted assigns.
11.7 RELATIONSHIP OF THE PARTIES. The relationship of the parties
hereunder shall be that of independent contractors. Nothing in this Agreement
shall be deemed to create a partnership, joint venture or similar relationship
between the parties, and no party shall be deemed to be the agent of the other
party.
11.8 PUBLICITY. Licensee shall not issue any press release, use any of
GEMS' other products or its name in promotional activity, or otherwise publicly
announce or comment on this Agreement, without GEMS' prior written consent.
11.9 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be an original with the same effect as if the
signatures thereto and hereto were upon the same instrument.
7
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the date first written above.
GENERAL ELECTRIC COMPANY LICENSEE
By: /s/ Xxxxx X. Xxxxxxxx By: /s/ Xxxx X. Xxxxxx
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Name: Xxxxx X. Xxxxxxxx Name: Xxxx X. Xxxxxx
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Title: Vice President Title: Chief Executive Officer
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