Exhibit 10.12
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is entered into as of the 14th day
of January, 2002, (the "Effective Date") by and between PROFILE, LLC, a Delaware
limited liability company ("Profile") and PRO URO CARE INC., a Minnesota
corporation ("Licensee").
RECITALS
WHEREAS, Profile owns or has licensed the Licensed Technology (defined
below); and
WHEREAS, the parties desire for Licensee to be granted an exclusive
license to the Licensed Technology in the defined field of use, subject to the
terms and conditions of this Agreement.
NOW THEREFORE, in consideration of the foregoing and the covenants and
premises contained in this Agreement, the parties agree as follows:
ARTICLE 1
DEFINITIONS
As used herein, capitalized terms will have the meanings set forth
below.
1.1 "Affiliate" shall mean any entity that controls, is controlled by
or is under common control with a party hereto. "Control" shall mean the
possession of the power to direct or cause the direction of the management and
policies of such entity, whether through the ownership of voting securities, by
contract or otherwise. Profile represents that each of ArMed, Inc. and ArMed
L.L.C. are not an Affiliate of Profile, within the meaning of this definition.
1.2 "Confidential Information" shall mean any confidential or
proprietary information embodied in the Devices or Licensed Technology, and any
information which relates to any research project, work in process, future
development, scientific, engineering, manufacturing, marketing, business plan,
financial or personnel matter relating to either party, its present or future
products, sales, suppliers, customers, employees, investors or business, whether
in oral, written, graphic or electronic form.
1.3 "Devices" shall mean any composition of matter, material or product
that is either covered by the Licensed Patents or the Licensed Know-how, or
whose manufacture, use or sale would constitute, but for the license granted to
Licensee pursuant to this agreement, an infringement of any pending or issued
claim within the Licensed Patents.
1.4 "Field of Use" shall mean the diagnosis of and the treatment of (a)
benign prostatic hyperplasia; (b) prostatitis; (c) prostate cancer; or (d) any
other conditions of or disorders of the prostate, whether healthy or diseased,
and any other condition of urologic disorder which may be diagnosed, imaged or
treated using any diagnostic or imaging process.
1.5 "Licensed Know-how" means all techniques, inventions, practices,
methods, knowledge, skill, experience, bench testing information, and all other
information and data relating to the Licensed Patents or the Field of Use, and
which are now or in the future owned or licensed, by Profile or its Affiliates.
1.6 "Licensed Names" means any Names as defined in Section 2.3 which
are included in the license made hereunder pursuant to the provisions of Section
2.3 (it being understood that there may be no such Names).
1.7 "Licensed Patents" means (a) the patents and patent applications
listed on Exhibit A hereto, (b) any future patents and patent applications
pertaining to or that have application in the Field of Use, and which are owned
or licensed, by Profile, and (c) all foreign counterparts, all substitutions,
extensions, reissues, renewals, continuations and continuations in part relating
to any Licensed Patents and their foreign counterparts, and which are owned or
licensed, by Profile or its Affiliates. Exhibit A shall be updated by the
parties as needed from time to time during the term of this Agreement.
1.8 "Licensed Technology" means (a) the inventions, discoveries,
processes, devices and/or claims covered under the Licensed Patents; and (b) the
Licensed Know-how, and (c) the Licensed Names (if any).
1.9 "Net Sales" means all revenues recognized in accordance with
generally accepted accounting principles relating to the sale of Devices by or
for Licensee, less transportation charges, discounts actually taken, credits
allowed for defective or returned goods, and other allowances (actually paid or
allowed, including but not limited to, prompt payment and volume discounts,
charge backs from wholesalers and other allowances granted to the end commercial
customer of the Devices, whether in cash or trade), insurance and sales and
other taxes based on sales prices when included in gross sales, but not
including taxes assessed on income derived from such sales.
ARTICLE 2
GRANT OF LICENSE AND OTHER OBLIGATIONS
2.1 License Grant. Subject to the terms and conditions of this
Agreement, Profile hereby grants to Licensee an exclusive, worldwide,
royalty-bearing, limited license under the Licensed Technology to make, have
made, import, use, sell and have sold the Devices solely within the Field of
Use.
2.2 Degree of Exclusivity. Except as otherwise provided herein, the
license granted in Section 2.1 shall be exclusive for the life of the Agreement.
As used herein, "exclusive" shall mean that Profile may not grant any other
license to any other third party of the Licensed Technology, in whole or in
part, within the Field of Use, and that Profile and its Affiliates may not
practice any claim encompassed within the foregoing within the Field of Use.
Notwithstanding the foregoing, Profile and other third parties reserve the right
to make, to have made, use or sell, directly or through others, for any products
embodying or otherwise using the Licensed Technology for applications outside
the Field of Use.
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2.3 Name License. To the extent Profile owns any name, trade name,
trademark or other designation (collectively, "Names") that are used in
connection with the Licensed Technology, said Names shall be included in and
subject to the license granted in Section 2.1.
2.4 Sublicense. Licensee may grant to third parties a sublicense to
manufacture, use, import or sell Devices, provided that a least a majority of
the members of Licensee's Board of Directors (the "Board") approves such
sublicense.
2.5 Licensed Know-how. Profile will provide or make available all
Licensed Know-how to Licensee in a timely manner.
ARTICLE 3
OWNERSHIP
Licensee acknowledges and agrees that, as between Profile and Licensee,
Profile shall retain all rights to the Licensed Technology, and Licensee shall
have no rights in the Licensed Technology other than those rights expressly
granted to Licensee under this Agreement.
ARTICLE 4
CONSIDERATION
4.1 Calculation and Payment of Royalties. Beginning on the Effective
Date, Licensee shall pay to Profile an ongoing royalty pursuant to this Section
4.1.
(a) Calculation of Royalties. Within thirty (30) days after
the end of each calendar quarter, Licensee shall pay to Profile a royalty at the
percentage indicated in the chart below on the Net Sales of all Devices sold or
distributed during such calendar quarter. The applicable percentage rate depends
on the level of Net Sales achieved during each calendar year, and is as follows:
Sales During Calendar Year Royalty Rate
-------------------------- ------------
From $0 to $30,000,000 3.05%
$30,000,001 to $100,000,000 2.05%
Over $100,000,000 1.05%
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(b) Payment of Royalties. At the same time that it makes
payments of royalties due with respect to a calendar quarter, Licensee shall
deliver to Profile a true and complete accounting of sales of Devices and
receipts from those sales during the quarter, with a separate accounting of
sales and receipts by country and a calculation of the royalty payment due
Profile for such calendar quarter. If no sales of Devices were made in such
quarter, then Licensee's statement shall be a statement to such effect. Licensee
hereby covenants that if it desires to sell, lease or otherwise place any
Devices in exchange for consideration in a manner that makes it impractical to
calculate the royalty due, it will not do so without first devising a mechanism
for the calculation of royalties thereon and obtaining Profile's prior written
consent for such mechanism.
4.2 Foreign Payments. In transactions giving rise to an obligation to
make payment hereunder with respect to which Licensee receives payment in a
currency other than U.S. Dollars, all payments required to be made by Licensee
under Section 4.1 shall be converted, prior to payment, into U.S. Dollars at the
applicable rate of exchange of Citibank, N.A., in New York, New York, on the
last day of the calendar quarter in which such transaction occurred. If Licensee
is prevented from making any payment under this Agreement by virtue of the laws
of the country from which the payment is to be made, Licensee may deposit the
amount that has accrued to Profile's account in the currency of such country in
a bank in such country that is acceptable to Profile.
4.3 Overdue Payments. Payments due to Profile hereunder shall, if not
paid when due under the terms of this Agreement, bear simple interest at the
lesser of 1.5% per month or the highest rate permitted by law, calculated on the
basis of a 360-day year for the number of days actually elapsed, beginning on
the due date and ending on the day prior to the day on which payment is made in
full. Interest accruing under this Section shall be due to Profile on demand.
The accrual or receipt by Profile of interest under this Section shall not
constitute a waiver by Profile of any right it may otherwise have to declare a
default under this Agreement or to terminate this Agreement.
ARTICLE 5
OTHER OBLIGATIONS
5.1 Licensee Responsibility. Licensee shall direct, and shall
diligently proceed with the development, manufacture, and sale of Devices within
the Field of Use and shall earnestly and diligently endeavor to market the same
within a reasonable time after execution of this Agreement and in quantities
sufficient to meet the market demands therefor. During the time period
commencing on the Effective Date and ending on the earlier of December 31, 2002
or the date of a Qualifying Transaction, as defined in Section 7.2 below, it is
agreed that Licensee will fund development of the Licensed Technology for the
Field of Use at an average rate of not less than $25,000 per month and not in
excess of $35,000 per month. The parties acknowledge that the nature of such
development means that payments will not necessarily be incurred on a regular
monthly basis. Therefore, compliance with the requirements of this Section shall
be determined based on average monthly expenditures during six (6) month
periods, with the first such period to commence on the Effective Date, the
second such period to commence on the date six (6) months after the Effective
Date, and so on.
5.2 Patent Protection and Prosecution. Commencing on the Effective
Date, Licensee shall be responsible for the patent prosecution and legal work
necessary to maintain the Licensed Patents for applications in the Field of Use.
In connection with these activities, the parties have the following agreements
and understandings:
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(a) During this time period commencing on the Effective Date
and through the date of a Qualifying Transaction, all decisions about
prosecution of any patent or patent application will be made jointly by Profile
and Licensee, with the decisions to be mutually acceptable to both parties. In
this connection, it is understood that expenditures shall be determined in the
exercise of the parties' reasonable business judgment, taking into account
expected returns from the expenditures. After the date of a Qualifying
Transaction, the decisions regarding prosecution of any patents or patent
applications shall be made by the board of Licensee in the exercise of its
reasonable business judgment. Wherever the Board of Licensee makes a decision
that it will not continue to maintain a patent, License shall promptly advise
Profile of this decision so that Profile may decide whether or not it wishes to
pay the maintenance fees.
(b) Where an expenditure is of a nature that it will provide
benefits which apply both in the Field of Use and outside the Field of Use, the
parties shall reach agreement as to how the expenditure shall be shared between
Profile and Licensee, based upon a reasonable apportionment of such expenses
between Licensee and Profile. Licensee shall not be responsible for patent
prosecution and legal work relating to the Licensed Patents outside of the Field
of Use, and Profile shall determine, in its discretion, whether it wishes to
incur such expenses.
(c) Exhibit B attached hereto outlines the expenditures which
are expected to be required during the next twelve (12) months. The parties have
agreed that these are the expenditures which will be made in or about this time
period.
(d) The Board of Licensee shall determine the nature and
extent of expenditures which will be incurred by Licensee pursuant to this
section, in the exercise of the Board's reasonable business judgment. For these
purposes, the Board shall consider and take into account the amount and timing
of expenses, and the potential benefit to Licensee, considering both possible
revenues which might be received, the risk that the revenues will not be
achieved, and the expected cost, as well as other germane factors.
(e) Profile represents that Exhibit C attached hereto lists,
in reasonable detail, the type and amount of expenditures made by Profile, or
its predecessors in interest, with respect to the Licensed Technology for patent
prosecution and legal work for applications in the Field of Use.
(f) The parties agree that Licensee shall determine the
professionals to be used for patent prosecution and activities under this
Section, subject to the consent of Profile, such consent not to be unreasonably
withheld or delayed. Without limiting Licensee's right to designate other
professionals, Profile hereby consents to the use of firm of Fish & Xxxxxxxxxx
for these purposes.
(g) Licensee will keep Profile informed on a regular basis of
the status of the License Patents and the actions taken under this Section.
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5.3 Government Approvals. As between the parties, Licensee shall be
solely obligated to obtain all necessary governmental approvals for the
manufacture, use, and sale of Devices within the Field of Use in the United
States or any other countries. It is understood that decisions on what
governmental approvals should be obtained shall be made by Licensee in the
exercise of its reasonable business judgment.
5.4 Progress Reports. Beginning at the end of the first anniversary of
the Effective Date and annually thereafter, Licensee shall submit to Profile a
summary progress report covering Licensee's activities in the preceding year
related to the development and testing of all Devices within the Field of Use
and Licensee's progress, if any, in obtaining governmental approvals necessary
for marketing such products. Such progress reports shall include, but not be
limited to, a summary of the following topics: research and development work
completed; key scientific discoveries; work in progress; current schedule of
anticipated events or milestones; and market plans for introduction of new or
additional Devices.
5.5 Patent Marking. Licensee shall xxxx all Devices made, used, or sold
under the terms of this Agreement, or their containers, in accordance with 35
U.S.C. ss. 287(a) or any other successor statute in the United States and the
applicable patent marking laws of any other country. Upon Profile' written
request, Licensee shall furnish reasonable and representative samples of the
Devices to demonstrate compliance with this Section.
5.6 Insurance. Licensee, at its sole cost and expense, shall insure its
activities in connection with the exercise of its license under this Agreement
in an appropriate amount at all times. Without limiting the foregoing, Licensee
shall obtain, keep in force, and maintain, at a minimum, Comprehensive or
Commercial Form General Liability Insurance (contractual liability included) or
an equivalent program of self-insurance with appropriate limits, which limits
will increase as needed depending on the activities of Licensee (i.e., more
coverage once human testing begins). Licensor shall be named as an additional
insured on any such policies.
ARTICLE 6
CONFIDENTIALITY
6.1 Confidentiality. During the term of this Agreement and thereafter,
each party hereto will maintain in confidence all Confidential Information
disclosed by the other party hereto. Neither party will use, disclose or grant
use of such Confidential Information except as expressly authorized by this
Agreement. To the extent that disclosure is authorized by this Agreement, the
disclosing party will obtain prior agreement from its employees, agents or
consultants to whom disclosure is to be made to hold in confidence and not make
use of such information for any purpose other than those permitted by this
Agreement. Each party will use at least the same standard of care as it uses to
protect its own Confidential Information to ensure that such employees, agents
or consultants do not disclose or make any unauthorized use of such Confidential
Information. Each party will promptly notify the other upon discovery of any
unauthorized use or disclosure of the Confidential Information.
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6.2 Exceptions. The obligations of confidentiality contained in Section
6.1 will not apply to the extent that it can be established by the receiving
party by competent written proof that such Confidential Information:
(a) was already known to the receiving party, other than under
an obligation of confidentiality, at the time of disclosure by the other party;
(b) was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the other party;
(c) became generally available to the public or otherwise part
of the public domain after its disclosure and other than through any act or
omission of the receiving party in breach of this Agreement;
(d) was disclosed to the receiving party, other than under an
obligation of confidentiality, by a third party who had no obligation to the
other party not to disclose such information to others.
The parties agree that the material financial terms of this Agreement will also
be considered Confidential Information of both parties.
6.3 Authorized Disclosure. Each party may disclose the Confidential
Information to the extent such disclosure is reasonably necessary in complying
with applicable governmental regulations, provided that if such party is
required to make any such disclosure of the Confidential Information it will to
the extent practicable give reasonable advance notice to the other party of such
disclosure requirement so that confidential treatment of the information
required to be disclosed may be secured.
ARTICLE 7
TERM; TERMINATION
7.1 Term. This Agreement will commence on the Effective Date and,
unless sooner terminated as provided hereunder, will terminate upon the later of
(i) the date of the expiration of the last to expire patent included in the
Licensed Technology, or (ii) the date that the Licensee permanently ceases the
sale of Devices hereunder.
7.2 Termination by Profile. Profile may terminate this Agreement in
accordance with the following:
(a) Failure to Make Timely Payment. Profile may terminate this
Agreement upon ten (10) days written notice if Licensee fails to timely make any
payment to Profile required by this Agreement and fails to cure the nonpayment
within ten (10) days of written notice thereof from Licensee.
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(b) Failure to Capitalize. Profile may terminate this
Agreement upon thirty (30) days written notice to Licensee, unless on or before
December 31, 2002 (i) Licensee has obtained equity financing in an amount which
is not less than $5,000,000, and (ii) Licensee has at least $1,500,000, which is
available and designated for the development of a diagnostic system based on the
Licensed Technology under budgets approved by the Board of Licensee. (For
purposes of this Agreement, achievement of these requirements is referred to as
a "Qualifying Transaction".) In this connection, it is understood that Licensee
may obtain financing referred to in this Section, either through direct
investments by investors, or by a merger or other form of acquisition or
business combination, which results in the requisite amounts being obtained.
Notwithstanding the foregoing, if before the expiration of the 30 day
period referred to in the notice, Licensee achieves a Qualifying Transaction
(even if it is after December 31, 2002), the termination shall not be effective,
and this License shall remain in full force and effect.
7.3 Termination by Either Party. This Agreement may be terminated by
either party upon written notice if the other party breaches a material
provision of this Agreement, and does not cure such breach within sixty (60)
days of written notice thereof.
7.4 Effect of Termination.
(a) Termination of License. Upon termination or expiration of
this Agreement for any reason, the license granted to Licensee pursuant to
Section 2.1 shall automatically terminate. Licensee shall immediately cease all
use of the Licensed Technology, including all Licensed Technology included in
the Devices, and shall provide a written account to Profile of the following
within fifteen (15) days of termination:
(1) All development in progress; sales of Devices
made but not shipped; inventory
of Devices on hand as well as work in process;
(2) Royalties due but not paid up to date of
termination.
(b) Return of Confidential Information. Within thirty (30)
days of termination of this Agreement for any reason, both parties shall return
or destroy all copies of the other party's Confidential Information and shall
provide written certification of such destruction upon request of the other
party.
(c) Royalty Obligation. Licensee acknowledges that the
termination of this Agreement by either party for any reason shall not absolve
Licensee of its payment and other obligations under Section 4.1(b).
(d) Survival. In the event of termination of this Agreement,
Articles 3, 4, 6, 8, 9, 10, 11 and 12 shall survive.
(e) Return of Stock. In the event of any termination of this
Agreement other than pursuant to clauses (i) or (ii) of Section 7.1, Profile
shall promptly return and reconvey to Licensee all shares of stock of Licensee
which have been issued to Profile, including any such shares issued pursuant to
that certain Stock Purchase Agreement, dated contemporaneously herewith between
Profile and Licensee (the "Stock Purchase Agreement"). In reconveying said
shares, Profile shall warrant that it is conveying good and marketable title
thereto, free of all liens and encumbrances, but shall make no other warranty
with respect to said shares of stock. Notwithstanding the foregoing,
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(1) if the notice of termination is delivered after
the "Public Company Date", as
defined below, then (i) if Licensee delivers the notice of termination, Profile
shall not be obligated to return any shares of stock, and (ii) if Profile
delivers the notice of termination, Profile shall only be required to return a
number of shares equal to fifty percent (50%) of the number of shares which,
absent this provision, Profile would be required to return. In this connection,
it is specifically understood that after the Public Company Date, where Profile
is obligated to return fifty percent (50%) of the shares, the shares returned
need not be the identical shares issued to Profile, but may be made up of shares
which Profile has purchased or otherwise obtained;
(2) if Profile delivers written notice of termination
pursuant to Section 7.2(a) for failure to pay royalties and if, in said notice,
Profile provides Licensee with ninety (90) days to cure the non-payment rather
than ten (10) days, then, if the cure is not effectuated by the end of the
ninety (90) day period and Profile completes the termination, Profile will not
be required to return any shares of stock.
For these purposes, the "Public Company Date" shall mean the
first date on which Licensee is either a public company with shares of stock
which are publicly traded, or a direct or indirect subsidiary of a company which
is a public company with shares of stock which are publicly traded; provided,
however, that if Licensee becomes a public company through an initial public
offering, the "Public Company Date" shall be the expiration date of any lock-up
period on the shares of Profile required by the underwriters of the initial
public offering.
ARTICLE 8
REPRESENTATIONS AND WARRANTIES
8.1 Representations and Warranties. Each party hereby represents and
warrants:
(a) Corporate Power. Such party is duly organized and validly
existing under the laws of the state of its incorporation or formation and has
full corporate or limited liability company, as applicable, power and authority
to enter into this Agreement and to carry out the provisions hereof.
(b) Due Authorization. Such party is duly authorized to
execute and deliver this Agreement and to perform its obligations hereunder.
(c) Binding Agreement. This Agreement is a legal and valid
obligation binding upon it and enforceable in accordance with its terms. The
execution, delivery and performance of this Agreement by such party does not
conflict with any agreement, instrument or understanding, oral or written, to
which it is a party or by which it may be bound, nor violate any law or
regulation of any court, governmental body or administrative or other agency
having jurisdiction over it.
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8.2 Representations and Warranties of Licensee. Licensee hereby
represents and warrants to Profile the following:
(a) Performance; Noninfringement. Licensee hereby represents
and warrants to Profile that it will perform its obligations hereunder in a
lawful, businesslike and professional manner and that, to the knowledge of
Licensee, the Devices do not infringe on any patent, copyright or trade secret
of a third party.
8.3 Representations and Warranties of Profile. Profile hereby
represents and warrants to Licensee the following:
(a) Right to Grant License. Profile, to its knowledge, has all
rights necessary to grant the license hereunder to Licensee.
(b) No Infringement Claims. As of the Effective Date, to the
knowledge of Profile, the Licensed Technology does not infringe, and there are
no claims that the Licensed Technology infringes, any patent, copyright or trade
secret of a third party.
(c) Licensed Technology. To the knowledge of Profile, the
Licensed Technology includes all inventions, discoveries, processes, devices
and/or claims covered under patents, and all techniques, inventions, practices,
methods, knowledge, skill, experience, bench testing information, and other
information and data (collectively, "Know-how"), which Profile or its Affiliates
own or have the right to sublicense for use in the Field of Use. In addition,
Profile owns or has the rights to, and the Licensed Technology includes, all
inventions, discoveries, processes, devices and/or claims covered under patents,
or applications therefor, and all Know-how and all other assets which were
previously owned by ArMed, Inc. or ArMed L.L.C. or in which ArMed, Inc. or ArMed
L.L.C. previously had an interest, which relate to the Licensed Technology.
ARTICLE 9
INDEMNIFICATION, LIABILITY, INFRINGEMENT
9.1 Indemnification by Licensee. Licensee hereby agrees to indemnify,
defend and hold Profile harmless from any third party suit, claim or other legal
action ("Legal Action") that alleges the Devices, or any of them, infringe any
patent, copyright, trade secret, trademark or other proprietary right, including
any reasonable costs or legal fees thereby incurred by Profile, except to the
extent Profile is required to indemnify and hold harmless Licensee pursuant to
Section 9.2, and except that this obligation shall not apply to the extent any
infringement, whether or not known, existed on the date the Licensed Technology
was licensed to Licensee hereunder. Licensee shall also indemnify, defend and
hold Profile harmless against any Legal Action resulting from or arising out of
Licensee's performance under or breach of this Agreement, including, but not
limited to, any damages, losses or liabilities, whatsoever with respect to death
or injury to any person and damage to any property arising from the design,
possession, manufacture, use, sale, support, servicing or administration of the
Devices. Profile shall give Licensee written notice of any Legal Action within
twenty (20) days of Profile's first knowledge thereof.
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9.2 Indemnification by Profile. Profile hereby agrees to indemnify,
defend and hold Licensee harmless from any Legal Action arising out of or
resulting from Profile's breach of the warranties contained in Section 8.3,
including any reasonable legal fees thereby incurred by Licensee, except to the
extent Licensee is required to indemnify Profile under Section 9.1. Licensee
shall give Profile written notice of any Legal Action within twenty (20) days of
Licensee's first knowledge thereof.
9.3 Suit for Infringement by Others. In the event Licensee becomes
aware of any actual or threatened infringement of all or any part of the
Licensed Technology including, without limitation, the patents contained
therein, Licensee shall promptly notify Profile and Licensee shall, in its sole
discretion, determine whether to commence infringement proceedings against the
alleged third party infringer. Profile shall cooperate in such proceedings as
reasonably requested by Licensee, and at Licensee's expense. If Licensee does
not bring such action within six (6) months from date on which Licensee notified
Profile of such infringement, Profile may bring such action at its own expense.
If Profile commences infringement proceedings, Licensee shall cooperate in such
proceedings, as reasonably requested by Profile, and at Profile's expense. In
any litigation undertaken by either party against an accused infringer, neither
party shall agree to any settlement, court order or consent without the other
party's written consent to the terms thereof, which consent will not be
unreasonably withheld. The party commencing litigation against an alleged third
party infringer shall be entitled to retain any and all proceeds from such suit.
ARTICLE 10
LIMITATION OF LIABILITY AND DISCLAIMER OF WARRANTIES
10.1 Waiver of Consequential Damages. EXCEPT FOR ANY USE OF THE
LICENSED TECHNOLOGY BY LICENSEE OUTSIDE OF THE SCOPE OF THE LICENSE GRANTED IN
SECTION 2 HEREOF, IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER PARTY OR
ANY THIRD PARTY FOR ANY LOST PROFITS, LOST SAVINGS, OR OTHER INCIDENTAL,
SPECIAL, OR CONSEQUENTIAL DAMAGES OR FOR ANY CLAIM BY ANY OTHER PARTY, EVEN IF
SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, ARISING OUT OF
OR IN CONNECTION WITH THIS AGREEMENT, THE GRANTING OF THE LICENSE HEREUNDER, OR
THE DESIGN, MANUFACTURE, USE OR SALE OF THE LICENSED TECHNOLOGY OR DEVICES.
10.2 Disclaimer of Warranties. EXCEPT AS EXPRESSLY PROVIDED HEREIN,
PROFILE IS PROVIDING THE LICENSED TECHNOLOGY AND ANY EQUIPMENT OR OTHER
MATERIALS PROVIDED HEREUNDER "AS IS," AND PROFILE HEREBY EXPRESSLY DISCLAIMS ANY
AND ALL WARRANTIES OF ANY KIND OR NATURE, WHETHER EXPRESS OR IMPLIED, INCLUDING,
WITHOUT LIMITATION, THE WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, RELATING TO THE LICENSED TECHNOLOGY AND ANY EQUIPMENT OR
OTHER MATERIALS PROVIDED HEREUNDER. Without limiting the generality of the
foregoing, Profile expressly does not warrant the accuracy, safety, or
usefulness for any purpose, of the Licensed Technology, any equipment or other
materials provided or made available by Profile hereunder or the Devices.
Nothing contained in this Agreement shall be construed as either a warranty or
representation by Profile as to the validity or scope of any patents contained
in the Licensed Technology, and Profile assumes no liability in respect of any
infringement of any patent or other right of third parties due to the activities
of Licensee or any sublicensee under this Agreement, subject to Section 8.3(b)
above.
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ARTICLE 11
RECORDS; AUDIT
11.1 Records Retention. Licensee will keep complete and accurate
records pertaining to the sale of the Devices. Such records will be maintained
for a three (3) year period following the year in which any such payments were
made hereunder.
11.2 Audit Request. Profile will have the right to engage, at its own
expense, an independent, certified public accountant reasonably acceptable to
Licensee, to examine Licensee's records from time to time as may be necessary to
determine, with respect to any calendar year, the correctness of any report or
payment made under this Agreement. If any such audit reveals an underpayment of
more than five percent (5%) of the correct amount of royalties due hereunder,
such audit will be at the expense of Licensee. If any audit conducted on behalf
of Profile shows that Licensee underpaid the royalties due to Profile under the
licenses herein as to the period subject to the audit, then Licensee shall
immediately pay to Profile any such deficiency with interest thereon at an
annual rate equal to 2% above the U.S. dollar reference rate ("prime rate")
charged from time to time by Citibank, N.A. from the date due until paid or at
such lower rate as shall be the maximum rate permitted by law.
11.3 Survival. This Article 11 will survive any termination of this
Agreement for a period of three (3) years.
ARTICLE 12
MISCELLANEOUS PROVISIONS
12.1 Entire Agreement. This Agreement (including the Exhibits,
schedules and other documents referred to herein), the Stock Purchase Agreement
and the Amended and Restated Shareholder Control and Share Transfer Agreement,
dated contemporaneously herewith, by and among Profile, Licensee, Clinical
Network, Inc., Clinical Network, LLC and CS Medical Technologies, LLC contain
the entire understanding between the parties with respect to the subject matter
hereof and supersedes any prior understandings, agreements or representations,
written or oral, relating to the subject matter hereof.
12.2 Counterparts. This Agreement may be executed in separate
counterparts, each of which will be an original and all of which taken together
shall constitute one and the same agreement, and any party hereto may execute
this Agreement by signing any such counterpart.
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12.3 Severability. Whenever possible, each provision of the Agreement
will be interpreted in such manner as to be effective and valid under applicable
law, but if any provision of the Agreement is held to be invalid, illegal or
unenforceable under any applicable law or rule, the validity, legality and
enforceability of the other provision of this Agreement will not be affected or
impaired thereby.
12.4 Successors and Assigns. This Agreement shall be binding upon and
inure to the benefit of the parties hereto and their respective heirs, personal
representatives and, to the extent permitted hereunder, successors and assigns.
12.5 Assignability. Neither this Agreement nor any right, remedy,
obligation or liability arising hereunder or by reason hereof shall be
assignable (including by operation of law) by Licensee without the prior consent
of at least a majority of the members of Licensee's Board of Directors. Any
assignment which is not in accordance with this Section will be void.
12.6 Modification, Amendment, Waiver or Termination. No provision of
the Agreement may be modified, amended waived or terminated except by an
instrument in writing signed by the parties to this agreement. No course of
dealing between the parties will modify, amend, waive or terminate any provision
of this Agreement or any rights or obligations of any party under or by reason
of this Agreement.
12.7 Notices. All notices, consents, requests, instructions, approvals
or other communications provided for herein shall be in writing and delivered by
personal delivery, overnight courier, mail, electronic facsimile or e-mail
addressed to the receiving party at the address set forth herein. All such
communications shall be effective when received.
If to PROFILE:
Xxxx Xxxxxx
Graco Resources
0000 Xxx Xxxxx Xxxxx Xxxx
Xxxxxxxxxx, XX 00000
With a copy to:
Xxxxx X. Xxxxxxxxxx
Xxxxxxxxxx Xxxxxx & Xxxxxxx LLP
000 Xxxxxxxxx Xxxxxx
Xxxxxxx, XX 00000
If to Licensee, addressed to:
Xxxxx Xxxxxx
Solar Plastics, Inc.
000 00xx Xxxxxx X.X.
Xxxxxxxxxxx, XX 00000
13
With a copy to:
Xxxx Xxxxxx
Xxxx Plant Xxxxx Xxxxx & Xxxxxxx P.A.
00 Xxxxx Xxxxx Xxxxxx, Xxxxx 0000
Xxxxxxxxxxx, XX 00000
Any party may change the address set forth above by notice to each other party
given as provided herein.
12.8 Headings. The headings contained in this Agreement are for
reference purposes only and shall not in any way affect the meaning or
interpretation of this Agreement.
12.9 Governing Law. This Agreement is made in accordance with and shall
be governed and construed in accordance with the laws of the State of Minnesota,
without regard to conflicts of laws rules.
12.10 Third-Party Benefit. Nothing in this Agreement, express or
implied, is intended to confer upon any other person any rights, remedies,
obligations or liabilities of any nature whatsoever.
12.11 Jurisdiction and Venue. This Agreement may be enforced in any
federal court or state court sitting in Ramsey or Hennepin counties, Minnesota,
and each party consents to the jurisdiction and venue of any such court and
waives any argument that venue in such forum is not convenient. If any party
commences any action under any tort or contract theory arising directly or
indirectly from the relationship created by this Agreement in another
jurisdiction or venue, any other party to this Agreement shall have the option
of transferring the case to the above-described venue or jurisdiction or, if
such transfer cannot be accomplished, to have such case dismissed without
prejudice.
12.12 Waiver of Jury Trial. Each party irrevocably waives any and all
right to trial by jury in any legal proceeding arising out of or relating to
this agreement or the transactions contemplated hereby.
12.13 Remedies. The parties agree that money damages may not be an
adequate remedy for any breach of the provisions of this Agreement and that any
party may, in its discretion, apply to any court of law or equity of competent
jurisdiction for specific performance and injunctive relief in order to enforce
or prevent any violations this Agreement, any party against whom such proceeding
is brought hereby waives the claim or defense that such party has an adequate
remedy at law and agrees not to raise the defense that the other party has an
adequate remedy at law.
12.14 Expenses. Except as otherwise expressly provided for herein, each
party will pay its own expenses (including attorneys' and accountants' fees) in
connection with the negotiation of this Agreement, the performance of its
respective obligations hereunder and the consummation of the transactions
contemplated by this Agreement (whether consummated or not).
14
12.15 Advice of Counsel. Each party acknowledges that it has been
advised by counsel in the negotiation, execution and delivery of this Agreement.
12.16 Relationship of the Parties. Neither party is, nor will be deemed
to be, an agent or legal representative of the other party for any purpose.
Neither party will be entitled to enter into any contracts in the name of or on
behalf of the other party, and neither party will be entitled to pledge the
credit of the other party in any way or hold itself out as having authority to
do so. Except as provided in Section 5.7 hereof with respect to the Accepted
Debt of ArMed, no party will incur any debts or make any commitments for the
other.
12.17 Force Majeure. Neither party will be liable to the other for loss
or damages or will have any right to terminate this Agreement for any default or
delay (except any default or delay in the payment of money due hereunder)
attributable to any fire, floods, earthquake, embargo, war, act of war (whether
declared or not), insurrections, riots, civil commotions, strikes, lockouts or
other labor disturbances, acts of God or act, omission or delay in acting by any
governmental authority or the other party, if the party affected will give
prompt notice of any such cause to the other party. The party giving such notice
will thereupon be excused from such of its obligations hereunder as it is
thereby disabled from performing for so long as it is so disabled and for thirty
(30) days thereafter; provided, however, that such affected party commences and
continues to take reasonable and diligent actions to cure such cause.
12.18 Export Control. Licensee acknowledges that the Licensed
Technology and Devices may be subject to the export control laws and regulations
of the United States of America, and it hereby agrees to obey any and all such
laws and regulations. Licensee agrees not to take any actions that would cause
either party to violate the U.S. Foreign Corrupt Practices Act of 1977, as
amended.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement, including the Exhibits attached hereto and incorporated herein by
reference.
PRO URO CARE INC. PROFILE, LLC
By: Xxxxxxx Xxxxxx By: [signed]
-------------- -------------
Title: President Title: Co-Manager
----------- -------------
15
Exhibit A
List of Licensed Patents
PROFILE
SUMMARY OF PATENTS/APPLICATIONS
Patent or Application
No. Title Status
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 5,860,934 Method and Device for Mechanical Imaging of Breast Issued 01/19/99
(CIP of App. 07/994,109)
--------------------------------- ---------------------------------------------------------- ------------------------
EP 97905986.2 Method and Device for Mechanical Imaging of Breast Filed 08/31/98
--------------------------------- ---------------------------------------------------------- ------------------------
Japan 09-530984 Method and Device for Mechanical Imaging of Breast Filed 08/27/98
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 5,833,633 Device for Breast Haptic Examination Filed 11/03/97
(CIP of 5,524,636) Issued 11/10/98
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 5,785,633 Method and Device for Mechanical Imaging of Prostate Filed 02/27/96
(CIP of 5,524,636) Issued 07/28/98
--------------------------------- ---------------------------------------------------------- ------------------------
EP 97907654.4 Method and Device for Mechanical Imaging of Prostate Filed 09/10/98
--------------------------------- ---------------------------------------------------------- ------------------------
JP 09-530983 Method and Device for Mechanical Imaging of Prostate Filed 08/27/98
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 5,836,894 Apparatus for Measuring Mechanical Parameters of the Filed 06/10/97
(CIP of 5,524,636) Prostate and for Imaging the Prostate Using such Issued 11/17/98
Parameters
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 5,922,018 Method for Using a Transrectal Probe to Mechanically Filed 06/10/97
(CIP of 5,524,636) Image the Prostate Gland Issued 07/13/99
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 5,524,636 Method and Apparatus for Elasticity Imaging Filed 12/21/92
Issued 06/11/96
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 5,265,612 Intracavity Ultrasonic Device for Elasticity Imaging Filed 12/21/92
Issued 11/30/93
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 6,142,959 Device for Palpation and Mechanical Imaging of the Filed 07/22/99
Prostate Issued 11/07/00
--------------------------------- ---------------------------------------------------------- ------------------------
PCT/US00/19756 Device for Palpation and Mechanical Imaging of the Filed 07/21/00
Prostate
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 09/843,056 Apparatus and Method for Mechanical Imaging of Breast Filed 04/26/01
--------------------------------- ---------------------------------------------------------- ------------------------
PCT/US01/13551 Apparatus and Method for Mechanical Imaging of Breast Filed 4/26/01
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 60/200,433 Apparatus and Method for Mechanical Imaging of Breast Filed 4/28/00
--------------------------------- ---------------------------------------------------------- ------------------------
U.S. 09/819,419 Real Time Mechanical Imaging of the Prostate Filed 03/28/01
--------------------------------- ---------------------------------------------------------- ------------------------
16
Exhibit B
Required Patent Expenditures
During Next 12 months
Attached hereto is a copy of a letter from the law firm of Mathews,
Collins, Shepherd & Xxxxx detailing expected costs on existing patents and
patent applications. For purposes of this exhibit, it is understood that only
expenditures shown in said letter, which are required in the next 12 months,
constitutes part of the exhibit.
In addition, attached to the letter is a schedule showing filing costs
and prosecution costs and maintenance fees in various countries for patents. The
parties have agreed that during the next 12 months, the only countries in which
filings will be made are the European Patent Office and in Japan. These filings
will be made only for patent file number 4774-106WO, Device for Palpation and
Mechanical Imaging of the Prostate, and for file number 4774-107WO, Apparatus
and Method for Mechanical Imaging of Breasts.
In the case of all expenditures referenced on this Exhibit B, it is
specifically understood that the provisions of Section 5.2(b) apply in any case
where the expenditure is of a nature that it will provide benefits which apply
both in the Field of Use and outside the Field of Use.
17
November 2, 2001
Via E-Mail
Xx. Xxxx X. Xxxxxxx
President & C.O.O.
ArMed L.L.C.
00000 Xxxxxxx Xxxxxxxxx, Xxx. 000
Xxxxxxxxxxx, Xxxxxxxxx 00000
RE: Status Report of ArMed LLC Patent Files
Our Ref.: 4774-101 US
Dear Xxxx:
In accordance with your request, the following lists the status and
cost estimates of your patent matters.
PROSTATE
File No. Title Status Cost Estimate
----------- --------------------- ------------------------------ ---------------
4774-103US Method and Device for U.S. Patent No. 5,785,663
Mechanical Imaging of Issued July 28, 1998
Prostate
Maintenance Fees Due:
January 28, 2002 (3.5 years) $ 440.00
January 28, 2006 (7.5 years) $1010.00
January 28, 2010 (11.5 years) $1550.00
4774-103EP Method and Device for Filed September 10, 1998
Imaging the Prostate Annual Fee due February 28, 2002 $ 900.38
Possible Examination by
Examiner and Related Costs $1500-$4000
18
File No. Title Status Cost Estimate
----------- ---------------------------- ----------------------------------- -----------------------
4774-103JP Method and Device for Filed August 27, 1998
Imaging the Prostate Request for Examination to be filed $1830.00
by February 18, 2004
4774-103.1 Apparatus for Measuring U.S. Patent No. 5,836,894
Mechanical Parameters of Issued November 17, 1998 the Prostate
and for Imaging the Prostate Using Such Maintenance Fees Due:
Parameters May 17, 2002 (3.5 years) $ 440.00
May 17, 2006 (7.5 years) $1010.00
May 17, 2010 (11.5 years) $1550.00
4774-103.2 Method for Using a U.S. Patent No. 5,922,018
Transrectal Probe to Issued July 13, 1999
Mechanically Image the
Prostate Gland Maintenance Fees Due
January 13, 2003 (3.5 years) $ 440.00
January 13, 2007 (7.5 years) $1010.00
January 13, 2011 (11.5 years) $1550.00
4774-106US Device for Palpation and U.S. Patent No. 6,142,959
Mechanical Imaging of Issued November 7, 2000
the Prostate
Maintenance Fees Due
May 7, 2004 (3.5 years) $ 440.00
May 7, 2008 (7.5 years) $1010.00
May 7, 2012 (11.5 years) $1550.00
4774-106WO Device for Palpation and National Stage Filing Costs depend on
Mechanical Imaging of Due January 22, 2002 countries designated for
the Prostate Need Instructions by National Stage filing
December 22, 2001 (See attached chart)
4774-108US Real Time Mechanical Filed March 28, 2001
Imaging of the Prostate Pending
PCT Application Due $3500-$4500
March 28, 2002
Possible Examination by $1000-$3500
Examiner and Related Issue Fees
19
BREAST
File No. Title Status Cost Estimate
------------- --------------------- ------------------------------- ------------------
4774-102US Method and Device for U.S. Patent No. 5,860,934
Mechanical Imaging of Issued January 19, 1999
Breast
Maintenance Fees Due:
July 19, 2002 (3.5 years) $ 440.00
July 19, 2006 (7.5 years) $1010.00
July 19, 2010 (11.5 years) $1550.00
4774-102.1 Device for Breast Haptic U.S. Patent No. 5,833,633
Examination Issued November 10, 1998
Maintenance Fees Due:
May 10, 2002 (3.5 years) $ 440.00
May 10, 2006 (7.5 years) $1010.00
May 10, 2010 (11.5 years) $1550.00
4774-102EP Method and Device for Filed August 31, 1998
Mechanical Imaging of Annual Fee due February 18, 2002 $ 900.38
Possible Examination by
Examiner and Related Costs $1500-$4000
4774-102JP Method and Device for Filed August 27, 1998
Mechanical Imaging of Request for Examination must be $1830.00
Breast filed by February 18, 2004
4774-107US Apparatus and Method Filed April 26, 2001
for Mechanical Imaging Pending
of Breast
Possible Examination by $1000-$3500
Examiner and Related Issue Fees
4774-107WO Apparatus and Method Filed April 26, 2001 Costs depend on
for Mechanical Imaging Pending countries designated for
of Breast Demand Filed National Stage filing
National Phase Filing Due (See attached chart)
October 28, 2002 - Need
Instructions by September 28, 2002
20
MISCELLANEOUS
File No. Title Status Cost Estimate
----------- ---------------------- ---------------------------- ----------------
0000-000 Xxxxxx and Apparatus U.S. Patent No. 5,524,636
for Elasticity Imaging Issued June 11, 1996
Maintenance Fees Due:
December 11, 2003 (7.5 years) $1010.00
December 11, 2007 (11.5 years) $1550.00
0000-000 Xxxxxxxxxxx Ultrasonic U.S. Patent No. 5,265,612
Device for Elasticity Issued November 30, 1993
Imaging
Maintenance Fees Due:
May 30, 2001 (7.5 years) $1010.00
May 30, 2005 (11.5 years) $1550.00
If you have any questions, or require further assistance, please let us
know.
Very truly yours,
MATHEWS, COLLINS, SHEPHERD & XXXXX
Xxxxx Xxxx XxXxx
21
------------------------------- ---------------------------- ---------------------------- ----------------------------
Countries Filing Costs Prosecution Annuities or Maintenance
Fees
Over the Lifetime of the
Patent
------------------------------- ---------------------------- ---------------------------- ----------------------------
European Patent Office* 10,000 31,000** 85,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Australia 2,500 3,500 10,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Brazil 5,000 5,000 10,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Canada 1,500 2,000 6,500
------------------------------- ---------------------------- ---------------------------- ----------------------------
China 4,000 3,500 8,500
------------------------------- ---------------------------- ---------------------------- ----------------------------
Czech Republic 3,000 3,000 8,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Finland 7,000 3,000 13,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Hong Kong 3,000 3,000 9,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Hungary 3,000 3,000 14,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Japan 8,000 3,000 41,000***
------------------------------- ---------------------------- ---------------------------- ----------------------------
South Korea 7,000 3,500 47,000***
------------------------------- ---------------------------- ---------------------------- ----------------------------
Mexico 5,000 3,500 8,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Norway 5,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
New Zealand 1,500 2,500 6,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Poland 5,000 3,000 8,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Russian Federation 4,000 3,500 6,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Slovak Republic 2,500 3,000 8,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Turkey 4,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
Ukraine 5,000 3,000 8,000
------------------------------- ---------------------------- ---------------------------- ----------------------------
----------
*indicated 17 designations of Austria; Belgium; Switzerland and Liechtenstein;
Germany; Denmark; Spain; France; United Kingdom; Greece; Ireland; Italy;
Luxembourg; Monaco; Netherlands; Portugal; and Sweden.
**includes the payment of grant fees in 17 designated countries
***Note: over half of the maintenance fees for these countries occur after the
15th year of the grant of the patent
22
Exhibit C
Past Patent Expectations
Past Payments to Mathews, Collins, Shepherd & Xxxxx:
Year Amount
---- ------
1999 $17,289
2000 $20,823
2001 $32,421
Payments to Artann Laboratories for Patent Drafting of various Applications:
$25,000 total
Total payments for patents: $95,533
**Note that prior to 1999, Artann Laboratories paid all patent expenses directly
to the firm of Mathews, Collins, Shepherd & Xxxxx. No disclosure of such amounts
were made to Profile.
23
