EXHIBIT 10.58
COOPERATIVE TECHNOLOGY AGREEMENT
IN THIS AGREEMENT, Sofamor Xxxxx Group, Inc., an Indiana
corporation having a principal office at 0000 Xxxxxxx Xxxxx, Xxxxxxx, XX 00000
("SDG"), and Vista Medical Technologies, a Delaware corporation having a
principal office at 0000 Xxxxxxx Xxxxxxx, Xxxxxxxx, XX 00000, by and through
its HNS Microsurgery Division ("VMT"), hereby agree as follows:
ARTICLE I - BACKGROUND
WHEREAS:
1.1 VMT has products known as StereoSite-TM- Systems and certain
related products.
1.2 VMT owns and licenses intellectual property ("IP") rights and
technology related to the design, manufacture and operation of its products.
VMT conducts continuing research and development directed to improvements,
modifications and additions to its products.
1.3 SDG sells devices for neurosurgery, orthopedic surgery and
otolaryngology applications and implants and instruments for spinal and cranial
surgery, and SDG has considerable experience in the marketing, sale and service
of such devices and systems for such applications.
1.4 SDG desires an exclusive right of distribution of certain
products made by VMT in certain defined fields and territories corresponding to
SDG's current and anticipated markets, and VMT is willing to grant to SDG such a
distribution right pursuant to the terms and conditions of a certain
distribution agreement ("Distribution Agreement") concurrently executed by the
parties.
1.5 SDG and VMT recognize that application of VMT's products in
SDG's fields will require development of improved and modified products, and VMT
and SDG, therefore, have agreed to conduct joint research and development
pursuant to the terms and conditions of this Agreement.
NOW THEREFORE, in consideration of the representations, warranties,
covenants and agreements contained herein, and for other valuable consideration,
the receipt and adequacy of which is hereby acknowledged, the parties mutually
agree as follows:
ARTICLE II - DEFINITIONS
2.1 "Cooperative Development Area" shall mean research and
development on VMT Improvements, integration of VMT Products and SDG Products in
the SDG Field and on integration of the VMT Products and SDG Products with other
image guidance and display technologies which are capable of being used in the
SDG Field and the VMT Field.
2.2 "Effective Date" shall mean the date of signature of the last
party to sign.
2.3 "SDG Core Technology" shall mean all patents, trade secrets and
know-how owned by SDG or its Related Companies on the date of this Agreement or
subsequently developed or acquired by SDG or its Related Companies.
2.4 "SDG Field" shall mean all:
(a) neurosurgery, including, without limitation, cranial,
functional, skull base and spinal surgery;
(b) spinal surgery;
(c) radiation delivery, including, without limitation,
radiosurgery and radiotherapy;
(d) otolaryngology, including, without limitation,
functional endoscopic sinus surgery; and
(e) maxillofacial surgery.
2.5 "SDG Products" shall mean SDG's and its Related Companies' image
guidance systems and other products, including systems and instruments for
spinal surgery, having application in the SDG Field.
2.6 "StereoSite Systems" shall mean the current version of Vista's
visualization and related information systems for microscopy, endoscopy and
spinal surgery, together with all associated accessories, software and
disposables specific to such systems, together with any updates, modifications
or new versions thereof.
2.7 "VMT Core Technology" shall mean all patents, trade secrets and
know-how owned by VMT or its Related Companies on the date of this Agreement or
subsequently developed or acquired by VMT or its Related Companies relating to
the StereoSite Systems.
2.8 "VMT Current Products"' shall mean shall mean the StereoSite
Systems and related products, including, without limitation, the apparatus and
software listed in Schedule A
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of the Distribution Agreement.
2.9 "VMT Field" shall mean cardiothoracic surgery.
2.10 "VMT Improvements" shall mean any modified VMT Current Product
and any addition to the StereoSite System product line.
2.11 "VMT Products" shall mean and include VMT Current Products and
any VMT Improvements that subsequently become subject to the Distribution
Agreement pursuant to its terms.
2.12 "Work Plan" shall mean a written summary of the tasks to be
undertaken during a particular calendar year or other specified period in
connection with the conduct of activities contemplated by this Agreement,
together with a budget of the anticipated costs associated therewith, adopted by
the parties in accordance with this Agreement. Each Work Plan will include
reasonably detailed descriptions of the tasks and work to be performed, the
scheduling of tasks and work, the resources required to accomplish the work, the
costs associated with the planned work and whether VMT or SDG will be
responsible for accomplishing each task.
2.13 "Related Company" shall mean (a) a corporation, firm or
association which, or an individual who, owns a controlling interest in a party
hereto by stock ownership or otherwise, (b) a corporation, firm or association
in which a party hereto owns a controlling interest. by stock ownership or
otherwise, or (c) a corporation, firm or association in which a controlling
interest by stock ownership or otherwise is owned by a corporation, firm or
association which, or an individual who, also owns a controlling interest in a
party hereto by stock ownership or otherwise. A "controlling interest" shall
mean ownership or control of more than 50% of the shares of stock entitled to
vote for the election of directors in the case of a corporation, or more than
50% of the voting power in the case of a business entity other than a
corporation.
ARTICLE III - VMT RESPONSIBILITIES
3.1 VMT shall work exclusively (except of itself) with SDG in the
Cooperative Development Area.
3.2 In calendar year 1998, VMT shall spend on research and
development ("R&D") specifically focused on StereoSite Systems an amount not
less than *** . Such amount shall be in addition to any other expenditure
by VMT on R&D focused in other areas, regardless of whether such other R&D may
have application in or contribute to developments in the StereoSite Systems.
*** Portions of this page have been omitted pursuant to request for
Confidential Treatment and filed separately with the Commission.
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3.3 In calendar years after 1998 during the term of this Agreement,
VMT shall spend on research and development ("R&D") specifically focused on
StereoSite Systems an amount not less than *** of the actual SDG sales revenues
of VMT Products, including upgrades or replacement parts, sold by SDG or Related
Companies to third parties in the preceding calendar year under the Distribution
Agreement; provided, however, that VMT shall not be required to spend such
amount if such SDG's actual sales are less than *** of the target for such sales
as established in the Distribution Agreement. The amount spent by VMT in each
calendar year shall be in addition to any other expenditure by VMT in that year
on R&D focused in other areas, regardless of whether such other R&D may have
application in or contribute to developments in the StereoSite Systems.
3.4 VMT shall periodically meet and confer with SDG as reasonably
deemed necessary by the parties to coordinate their respective activities in the
Cooperative Development Area, and, as deemed appropriate by the parties, to
discuss any proposed revision of the allocation of the total revenue received
from SDG to R&D by VMT. VMT shall appoint one technically-qualified manager to
act as VMT's representative for contacts and exchanges with SDG. VMT shall
develop a preliminary draft of the Work Plan for 1998 by no later than March 31,
1998, and for each subsequent year during the term of this Agreement by no later
than September 30 of the prior calendar year.
3.5 At its discretion, VMT may disclose VMT Core Technology to SDG
in furtherance of the purposes of this Agreement. SDG shall have the option to
refuse to accept such VMT Core Technology.
3.6 Any SDG Core Technology disclosed to VMT pursuant to this
Agreement shall be used by VMT solely in the performance of its obligations
under the Work Plan and under the Distribution Agreement.
ARTICLE IV - SDG RESPONSIBILITIES
4.1 SDG shall work exclusively (except of itself) with VMT in the
Cooperative Development Area.
4.2 SDG shall periodically meet and confer with VMT as deemed
necessary by the parties to coordinate their respective activities in the
Cooperative Development Area. SDG shall appoint one technically-qualified
manager to act as SDG's representative for contacts and exchanges with VMT. SDG
shall review each preliminary Work Plan submitted by VMT within thirty (30) days
after receipt of such plan.
4.3 At its discretion, SDG may disclose SDG Core Technology to VMT
in furtherance of the purposes of this Agreement. VMT shall have the option to
refuse to accept such SDG Core Technology.
*** Portions of this page have been omitted pursuant to request for
Confidential Treatment and filed separately with the Commission.
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4.4 Any VMT Core Technology disclosed to SDG pursuant to this
Agreement shall be used by SDG solely in the performance of its obligations
under the Work Plan and under the Distribution Agreement.
ARTICLE V - CONFIDENTIAL INFORMATION
5.1 "Confidential Information" as used in this Agreement shall mean
all technical or business information disclosed by either party to the other
pursuant to this Agreement that is in tangible form and identified in tangible
form as being confidential and proprietary to the disclosing party or that is
disclosed orally or by demonstration, identified at the time of disclosure as
being confidential and proprietary to the disclosing party, and, within thirty
(30) days after such disclosure, is confirmed in a writing identified as
confidential and proprietary. No information shall be regarded as Confidential
Information if the receiving party can show by competent proof that such
information:
(a) was, at the time of disclosure, already known by the
receiving party, as shown by written records in the
possession of receiving party;
(b) was at the time of disclosure, or subsequently became,
through no fault of the receiving party known to the
general public through publication or otherwise; or
(c) was, subsequent to disclosure to the receiving party,
lawfully and independently received by the receiving
party from a third party who had the right to disclose
it without restriction.
Specific aspects or details of Confidential Information shall not be deemed to
be within the public domain or in the possession of receiving party merely
because the Confidential Information is embraced by general disclosures in the
public domain or in the possession of receiving party. In addition, any
combination of Confidential Information shall not be considered in the public
domain or in the possession of receiving party merely because individual
elements thereof are in the public domain or in the possession of receiving
party unless the combination and its principles are in the public domain or in
the possession of receiving party.
5.2 Either party, at its discretion, may disclose to the receiving
party any Confidential Information that the disclosing party, in its reasonable
judgment, believes is sufficient to enable the receiving party to perform under
this Agreement.
5.3 Each party agrees:
(a) to treat as confidential and to preserve the
confidentiality of all Confidential Information
disclosed to it by the other party;
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(b) to use any and all Confidential Information solely in
connection with performance under this Agreement and the
Distribution Agreement and for no other purpose;
(c) to make no disclosures of any Confidential Information
to any party other than its officers and employees
having a reasonable need to know; and
(d) to maintain in confidence any information regarding the
nature or scope of any transaction between the parties
hereto, except to the extent such information must be
disclosed pursuant to law, and then only after notifying
the other party of such requirement.
Any obligation imposed by this paragraph 5.3 may be waived in writing by the
disclosing party as to its particular Confidential Information and to a
particular use or disclosure. Any such waiver shall have a one-time effect and
shall not apply to any subsequent situation regardless of its similarity.
5.4 All Confidential Information shall remain the property of the
disclosing party and, upon request of the disclosing party, the receiving party
shall promptly return to the disclosing party all Confidential Information, or
any part or reproduction thereof.
5.5 The obligations of the receiving party and each employee and
officer of the receiving party under this Agreement with respect to Confidential
Information shall expire five (5) years from the date of termination of this
Agreement.
ARTICLE VI - WORK PLAN
6.1 The parties shall work together in good faith to approve a Work
Plan for 1998 by no later than May 15, 1998. With respect to each subsequent
calendar year during the term of this Agreement, the parties shall work together
in good faith to adopt a Work Plan by no later than December 15 of the prior
calendar year. The Work Plan for any calendar year may be amended only by a
written instrument executed by both parties specifically acknowledging such
amendment.
ARTICLE VII - INTELLECTUAL PROPERTY
7.1 Each party shall retain ownership of all patents, copyrights,
trademarks, trade secrets, know-how and Confidential Information (collectively
"IP") owned by it on the Effective Date of this Agreement.
7.2 Any invention or original work made during the performance of
the Work Plan or any other development work performed in the Cooperative
Development Area during the
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term of this Agreement, regardless of the employment of the inventors or
creators, that is derived solely from VMT Core Technology shall be owned
solely by VMT (hereafter "VMT Invention"). All IP directed to a VMT
Invention shall be owned by VMT. To the extent any officers, employees,
contractors or agents (collectively, "Employees") of VMT were involved in
making a VMT Invention, SDG shall cause such parties to assign their interest
in such VMT Invention, and associated IP, to VMT.
7.3 Any invention or original work made during performance of the
Work Plan or any other development work performed in the Cooperative Development
Area during the term of this Agreement, regardless of the employment of the
inventors or creators, that is derived solely from SDG Core Technology shall be
owned solely by SDG (hereafter "SDG Invention"). All IP directed to a SDG
Invention shall be owned by SDG. To the extent VMT Employees were involved in
making a SDG Invention, VMT shall cause such parties to assign their interest in
such SDG Invention, and associated IP, to SDG.
7.4 To the extent a VMT Invention developed during the term of this
Agreement has any application in the SDG Field, SDG shall have the right of
first refusal to exploit exclusively such VMT Invention in the SDG Field. VMT
shall promptly disclose to SDG all such VMT Inventions and all products
incorporating such VMT Inventions. SDG, within ninety (90) days after such
disclosure, may elect in writing to add such products to the Distribution
Agreement (with the approval of Sofamor Xxxxx X.X.) for exclusive distribution
by Sofamor Xxxxx X.X. in the SDG Field; provided, however, that if SDG fails to
add such products to the Distribution Agreement, VMT may make, have made, use,
sell, offer for sale, distribute and import any products incorporating such VMT
Inventions and without obligation to SDG, subject to SDG's rights to the SDG
Core Technology and the SDG Inventions. If, within ninety (90) days after
written request by SDG, VMT fails to agree to supply a specified product
incorporating a VMT Invention under the Distribution Agreement, VMT shall grant
to SDG an exclusive license under the VMT Invention, and any IP directed
thereto, to make, have made, use, sell, offer for sale, distribute and import
such specified product in the SDG Field, such license to be subject to payment
by SDG to VMT of a reasonable royalty to be agreed upon by the parties.
7.5 To the extent a SDG Invention developed during the term of this
Agreement has any application in the VMT Field, VMT shall have the first right
to exploit exclusively such SDG Invention in the VMT Field. SDG shall disclose
to VMT promptly all SDG Inventions and all products incorporating such SDG
Inventions. VMT, within ninety (90) days after such disclosure, may elect to
license such products on an exclusive basis in the VMT Field, subject to the
negotiation of a definitive supply agreement between the parties. If SDG and
VMT fail to reach mutual agreement upon the terms and conditions of a definitive
supply agreement, SDG may not enter into an arrangement with a third party for
the license or supply of the SDG Invention or any product incorporating the SDG
Invention within the VMT Field if the terms and conditions thereof, in the
aggregate, are more favorable to the third party than the terms and conditions
proposed by SDG to VMT.
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7.6 In the event Employees of either VMT and/or SDG, in performance
under this Agreement of the Work Plan, make an invention or original work that
is not derived solely from VMT Core Technology or SDG Core Technology ("Joint
Invention"), such Joint Invention shall be owned jointly by VMT and SDG. Each
party agrees to make full disclosure to the other party of any such Joint
Invention and any background information related thereto. The parties agree to
cooperate with each other in obtaining and maintaining IP directed to such Joint
Invention.
7.7 VMT hereby grants to SDG an exclusive license under VMT's
interest in any Joint Invention and IP directed thereto to fully exploit such
Joint Invention in the SDG Field. SDG hereby grants to VMT an exclusive license
under SDG's interest in any Joint Invention and IP directed thereto to fully
exploit such Joint Invention in the VMT Field. Each party shall be free to
exploit its interest in any Joint Invention, and any IP directed thereto,
outside the VMT Field and the SDG Field, provided, however, that the party so
exploiting the Joint Invention shall pay to the other party a reasonable royalty
on all sales incorporating the Joint Invention, shall impose such a reasonable
royalty on any licensee under a Joint Invention, and shall pay to the other
party *** of all revenue received from the licensing of the
Joint Invention. Each party agrees to give to the other a true copy of any
license granted to a third party under a Joint Invention within thirty (30) days
after June 30 and December 31 of each calendar year, an accounting of all sales
and licensing revenue subject to this paragraph and payment of any amounts then
due.
7.8 VMT shall have the first right to enforce in the VMT Field, at
its expense and for its recovery, any IP directed to a Joint Invention, and SDG
shall cooperate, at VMT's expense, with such enforcement by VMT. SDG shall have
the first right to enforce in the SDG Field, at its expense and for its
recovery, any IP directed to a Joint Invention, and VMT shall cooperate, at
SDG's expense, with such enforcement by SDG. Enforcement of a Joint Invention
or IP directed thereto outside the VMT and SDG Fields shall be the result of
mutual agreement by the parties.
7.9 Each party agrees to execute and deliver all documents
reasonably necessary to carry out the intentions of this Article VI.
ARTICLE VIII - FORCE MAJEURE
8.1 "Force Majeure" shall mean any event or condition, not existing
as of the date of signature of this Agreement, not reasonably foreseeable as of
such date and not reasonably within the control of either party, which prevents,
in whole or in material part, the performance by one of the parties of its
obligations hereunder, such as act of God, act of government, war or related
actions, civil insurrection, riot, sabotage, strike or other labor disturbance,
epidemic, fire, flood, windstorm, and similar events.
8.2 Upon giving notice to the other party, a party affected by an
event of Force
*** Portions of this page have been omitted pursuant to request for
Confidential Treatment and filed separately with the Commission.
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Majeure shall be released without any liability on its part from the performance
of its obligations under this Agreement, except for the obligation to pay any
amounts due and owing hereunder, but only to the extent and only for the period
that its performance of such obligations is prevented by the event of Force
Majeure.
8.3 During the period that the performance by one of the parties of
its obligations under this Agreement has been suspended by reason of an event of
Force Majeure, the other party may likewise suspend the performance of all or
part of its obligations hereunder to the extent that such suspension is
commercially reasonable.
ARTICLE IX - TERM AND TERMINATION
9.1 This Agreement shall commence on the Effective Date and may be
terminated by either party upon providing at least thirty (30) days written
notice to the other upon the earlier of (i) the expiration or termination of the
Distribution Agreement or (ii) upon the termination of Sofamor Xxxxx X.X.'s
rights to distribute VMT Products on an exclusive basis in the fields identified
in the Distribution Agreement in accordance with paragraph 6.1(b) of the
Distribution Agreement.
9.2 The provisions of paragraph 5.5 and Article VII hereof shall
survive the expiration or termination of this Agreement.
ARTICLE X - MISCELLANEOUS
10.1 This Agreement does not make either party the employee, agent or
legal representative of the other for any purpose whatsoever. Neither party is
granted any right or authority to assume or to create any obligation or
responsibility, express or implied, on behalf of or in the name of the other
party. In fulfilling its obligations pursuant to this Agreement, each party
shall be acting as an independent contractor.
10.2 This Agreement shall be binding upon and inure to the benefit of
the parties hereto and the successors or permitted assigns of the parties
hereto. The Agreement is personal to the parties and cannot be assigned by
either party without the prior written consent of the other party, provided,
however, that SDG may assign this Agreement and all rights and obligations to a
Related Company of SDG or to any person who succeeds to substantially all of the
assets and business of SDG to which this Agreement relates.
10.3 This Agreement and the Exclusive Distribution Agreement
constitute the entire agreement between the parties hereto with respect to the
subject matter hereof and superseded all prior agreements whether written or
oral relating thereto.
10.4 This Agreement shall be governed by and interpreted in
accordance with the laws of the State of California, including all matters of
construction, validity, performance and
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enforcement, without giving effect to principles of conflict of laws.
10.5 All of the representations, warranties, and covenants made in
this Agreement, and all terms and provisions hereof intended to be observed and
performed by the parties after the termination hereof, shall survive such
termination and continue thereafter in full force and effect.
10.6 The failure of any party hereto to enforce at any time any of
the provisions of this Agreement shall in no way be construed to be a waiver of
any such provision, nor in any way to affect the validity of this Agreement or
any part thereof or the right of the party thereafter to enforce each and every
such provision. No waiver of any breach of this Agreement shall be held to be a
waiver of any other or subsequent breach. Any amendment to this Agreement shall
be in writing and signed by the parties hereto.
10.7 This Agreement may be executed in any number of counterparts,
each of which shall be deemed as original and all of which together shall
constitute one instrument.
10.8 The titles and headings to Sections herein are inserted for the
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement. This Agreement shall be
construed without regard to any presumption or other rule requiring construction
hereof against the party causing this Agreement to be drafted.
10.9 Nothing in this Agreement, expressed or implied, is intended to
confer on any person other than the parties to this Agreement or their
respective successors or assigns, any rights, remedies, obligations or
liabilities under or by reason of this Agreement. Except as specifically
granted, nothing in this Agreement shall be construed as a grant by one party to
the other of a license under any IP rights of the one party.
10.10 All notices or other communications to a party required or
permitted hereunder shall be deemed given if in writing and delivered personally
or sent by telecopy (with confirmation of transmission) or certified mail
(return receipt requested) to such party at the following addresses (or at such
other addresses as shall be specified by like notice):
if to SDG, to:
Xxxxxxx X. Xxxxx, Xx.
President
Surgical Navigation Technologies
Sofamor Xxxxx Group, Inc.
0000 Xxxxxxx Xxxxx,
Xxxxxxx, XX 00000
FAX (000) 000-0000
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with a copy to:
Vice President & General Counsel
Sofamor Xxxxx Group, Inc.
0000 Xxxxxxx Xxxxx
Xxxxxxx, XX 00000
FAX (000) 000-0000
and if to VMT, to:
Vista Medical Technologies, Inc.
0000 Xxxxxxx Xxxxxxx, Xxxxx X
Xxxxxxxx, XX 00000
Attention: Xxxx Xxxx
FAX (000) 000-0000
with a copy to:
Xxxxxxx Phleger & Xxxxxxxx LLP
000 Xxxx X Xxxxxx, Xxxxx 0000
Xxx Xxxxx, XX 00000
Attention: Xxxxx Xxxxxxx
FAX (000) 000-0000
SDG or VMT may change their respective above-specified recipient and/or mailing
address by notice to the other party given in the manner herein prescribed. All
notices shall be deemed given on the day when actually delivered as provided
above (if delivered personally or by telecopy) or on the day shown on the return
receipt (if delivered by mail) or on the next day following delivery to a
reputable overnight carrier.
10.11 In the event any provision of this Agreement shall be declared
invalid, illegal or unenforceable, the validity, legality and enforceability of
the remaining provisions shall not in any way be affected or impaired thereby.
10.12 Each of the parties to this Agreement hereby agrees with the
other parties hereto that, except as may be required to comply with the
requirements of applicable law or any exchange upon which such party's capital
stock is listed or traded, no press release or similar public announcement or
communication will be made or caused to be made concerning the execution or
performance of this Agreement unless specifically approved in advance by SDG and
VMT. The foregoing shall not restrict either party's communications with
employees, customers or private investors.
10.13 Each party agrees to execute and deliver without further
consideration any
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further applications, licenses, assignments or other documents, and to
perform such other awful acts as the other party may reasonably require to
fully secure and/or evidence the rights or interests herein.
[Remainder of This Page Intentionally Left Blank]
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IN WITNESS WHEREOF, each of the parties has caused this Sales Agreement
to be executed in the manner appropriate to each, as of the date first above
written.
VISTA MEDICAL TECHNOLOGIES, INC.
By: /s/ Xxxx Xxxx
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Title: President and CEO
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Date: January 6, 1998
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SOFAMOR XXXXX GROUP, INC.
By: /s/ Xxxxxxx X. Xxxxx, Xx.
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Title:
--------------------------------
Date:
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