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EXHIBIT 10.01A
OPTION EXERCISE AND LICENSE AMENDMENT AGREEMENT
This OPTION EXERCISE AND LICENSE AMENDMENT AGREEMENT is made and entered
into as of the 31st day of March, 1999, by and between the UNIVERSITY OF
SOUTHERN CALIFORNIA, a California nonprofit corporation with its principal
place of business at Xxxxxxxxxx Xxxx, Xxx Xxxxxxx, Xxxxxxxxxx 00000 ("USC"),
and RUBICON MEDICAL, LLC, a Utah limited liability company with its principal
place of business at 0000 Xxxx Xxxxxxxxx, Xxxx Xxxx Xxxx, Xxxx 00000
("Licensee").
RECITALS
A. USC and Licensee are parties to that certain Option & License
Agreement with an effective date of March 12, 1998, as amended to date (the
"Agreement"), pursuant to which USC granted to Licensee an option to acquire a
license to use the PATENT(S) to manufacturer and sell the PRODUCT(S) as such
terms are defined in the Agreement.
B. Although the option to acquire such a license expired on March 12,
1999, the parties hereto desire to extend the option period, provide for
Licensee's exercise of such option and amend the royalty provisions of the
related license in the manner hereinafter provided.
NOW, THEREFORE, in consideration of the covenants herein contained, the
parties agree as follows:
1. Option Extension and Exercise. The option phase provided for in
Section 3(a) of the Agreement is hereby extended through the date of this
Amendment. Concurrent with the execution of this Amendment, (a) Licensee
hereby exercises such option and this Amendment shall be deemed written
notification pursuant to Section 4(a) of the Agreement of Licensee's desire to
license the PATENT(S) and (b) Licensee shall deliver to USC the initial
license fee of $5,000 required pursuant to Section 4(d) of the Agreement.
2. Royalty Amendment. Section 5(b) of the Agreement is hereby amended to
read in its entirety as follows:
"If any PRODUCT is manufactured and sold under sublicense from the Licensee,
the Licensee shall pay USC a royalty equal to fifteen percent (15%) of all of
the Licensee's revenue received from the sublicense, including but not limited
to earned royalty, prepaid royalty and license fees."
3. Xxxxxxx License. USC and Licensee hereby confirm that the Option &
License Agreement with an effective date of December 8, 1997 (the "Xxxxxxx
License") between USC and License has terminated and is of no further force or
effect whatsoever.
4. Release of All Claims. In consideration of the amended license royalty
provided for in Section 3 above, Licensee does hereby fully release and
forever discharge USC and its divisions, parents, officers, trustees,
employees, agents and representatives from and against any and all claims,
causes of action, liabilities, demands or charges of whatsoever nature which
may have arisen prior to the date hereof out of the Agreement or the Xxxxxxx
License; the execution, performance or alleged nonperformance of either the
Agreement or the Xxxxxxx License; or any of the facts or circumstances alleged
in the letter dated March 24, 1999, from Xxxxxxx X. Xxxxx of Licensee to Xxxx
Xxxxxx of USC.
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5. Full Discharge. It is the intention of Licensee that this Amendment,
when executed by Licensee, shall be effective as a complete discharge and bar
to each and all of the claims, causes of action, liabilities, demands and
charges as hereinabove described, including without limitation those relating
to unknown or unsuspected claims, causes of action, liabilities, demands or
charges, if any. Licensee is aware of the provisions of Section 1542 of the
California Civil Code, which reads as follows:
"A general release does not extend to claims which the creditor does not know
or suspect to exist in his favor at the time of executing the release, which
if known by him must have materially affected his settlement with the debtor."
Notwithstanding such statutory provision, and for the purpose of implementing
a full and complete release and discharge, Licensee hereby acknowledges that
the release set forth in Section 4 above is intended to include in its effect,
without limitation, all claims, causes of action, liabilities, demands or
charges which Licensee does not know or suspect to exist in its favor.
6. Reliance. Licensee represents and acknowledges that in executing this
Amendment it does not rely and has not relied upon any representation or
statement not set forth herein by USC or any other party with respect to the
subject matter, basis or effect of this Agreement or otherwise.
7. Entire Agreement. This Amendment constitutes the entire understanding
and agreement between the parties hereto with respect to the subject hereof,
including without limitation any claim or dispute which might exist between
them, and there arc no agreements, understandings, restrictions,
representations or warranties between the parties other than those set forth
herein.
8. Effect of Amendment. As amended by the provisions of this Amendment,
the provisions of the Agreement shall remain in full force and effect.
IN WITNESS WHEREOF, this Amendment has been executed as of the day and
year first above-written.
UNIVERSITY OF SOUTHERN RUBICON MEDICAL, LLC
CALIFORNIA
/S/Xxxxxx X. Xxxxxxxxx /S/Xxxxxxx X. Xxxxx
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(Signature) (Signature)
Xxxxxx X. Xxxxxxxxx Name: Xxxxxxx X. Xxxxx
Senior Vice President, Administration Title: Attorney for Rubicon
Medical, LLC
