TECHNOLOGY TRANSFER AND SETTLEMENT AGREEMENT
EXHIBIT
10.16
THIS
TECHNOLOGY TRANSFER AND SETTLEMENT AGREEMENT
(the
“Agreement”)
is made
and entered into as of November 15, 2006 (the “Effective
Date”),
by and
between VIKING
SYSTEMS, INC.,
a
Delaware corporation with offices at 0000
Xx
Xxxxx Xxxxxxx Xxxxx, Xxxxx 000, Xxx Xxxxx, XX 00000
(“VIKING”),
and
IVOW Inc., a Delaware corporation with offices at 00000 Xx Xxxxxx Xxxx, Xxxxx
000, Xxx Xxxxx, XX 00000 (“IVOW”).
RECITALS
WHEREAS,
IVOW
(formerly known as Vista Medical Technologies, Inc.) and VIKING License
Agreement”),
whereby IVOW licensed to VIKING certain patents and other technology owned
by or
lice previously executed a Patent and Technology License Agreement, dated April
15, 2004 (the “Vista
nsed
to
IVOW (the “Licensed
IP”);
WHEREAS,
VIKING
desires to obtain ownership of all right, title and interest in and to certain
IVOW Technology (as defined below) including the Licensed IP, and, for the
consideration set forth herein, IVOW is willing to assign ownership of such
IVOW
Technology to VIKING;
WHEREAS,
in
conjunction with such assignment of rights by IVOW, the parties desire to
terminate the Vista License Agreement and release each other from obligations
under the Vista License Agreement as set forth herein.
NOW,
THEREFORE, in
consideration of the promises and mutual covenants and agreements herein
contained, and for other good and valuable consideration (the receipt and
sufficiency of which are hereby acknowledged by the parties), the parties hereto
covenant and agree as follows:
AGREEMENT
SECTION
1. DEFINITIONS.
1.1 “IVOW
Patent Rights” shall
mean (i) the U.S. patents set forth on Exhibit
A
(including without limitation any extensions, reexaminations, or reissues
thereof) (the “Patents”);
(ii)
any continuation, divisional or continuation-in-part of any of the Patents;
and
(iii) any foreign counterparts of any of the Patents described in (i) or (ii)
(including without limitation any inventor’s certificates).
1.2 “IVOW
Technology” shall
collectively mean the Licensed IP, IVOW Patent Rights, the Patents, software
code, design documents, and any other proprietary materials provided by IVOW
to
VIKING hereunder related thereto, as further described in Exhibit
A.
1.3 Third
Party
shall
mean any entity or individual other than IVOW or VIKING or an Affiliate of
either IVOW or VIKING.
-1-
SECTION
2. INTELLECTUAL
PROPERTY TRANSFER.
2.1 Assignment
of IVOW Technology to VIKING.
IVOW
hereby irrevocably assigns, transfers, and conveys to VIKING all right, title
and interest in and to the IVOW Technology, including, without limitation,
the
following, to the extent any such rights, properties or information exist now
or
may hereafter come into existence: (i) all confidential, proprietary or trade
secret rights, patent and patent rights (in whatever name or names issued);
(ii)
all rights in and to any patent applications and patentable teachings; (iii)
all
rights to all copyrighted and copyrightable material; (iv) all technical data,
know-how, shop practices, plans, drawings, blueprints, specifications and
methods of manufacture; and (iv) all improvements, modifications, adaptations,
revisions, enhancements, additions or changes to any of foregoing. Without
limiting the generality of the foregoing, to the extent, as expressly indicated
in Exhibit
A,
any
IVOW Patent Rights are licensed to IVOW from a Third Party, all of IVOW’s rights
therein are included in the foregoing assignment. IVOW further agrees to
promptly execute, upon each request by VIKING, assignments and other documents,
and to take other acts as reasonably requested by VIKING, in order to apply
for
and obtain, in VIKING’s name and for its benefit, any and all patents, trade
secrets, or other intellectual property rights throughout the world related
to
the IVOW Technology and to transfer, effect, confirm, perfect, record, preserve,
protect and enforce all rights, titles and interests assigned hereunder. VIKING
agrees to reimburse IVOW for reasonable external expenses incurred by IVOW
in
performing such further actions as requested by VIKING.
2.2 Facilitation
of Transfer of IVOW Technology.
Concurrently with or prior to VIKING making the Second Payment (as defined
in
Exhibit
B),
IVOW,
shall cause to be delivered to VIKING any and all tangible manifestations of
the
IVOW Technology, including, without limitation, all notes, records, files and
tangible items of any sort in IVOW’s possession or under IVOW’s control relating
to the IVOW Technology. Such delivery shall include all present and predecessor
versions. In addition, upon VIKING’s reasonable request, IVOW agrees to provide
to VIKING, from and after the execution of this Agreement, a reasonable amount,
to the extent practical, of competent and knowledgeable assistance to facilitate
the transfer of all information, know-how, techniques, processes and the like
related to such tangible manifestation and otherwise comprising the intangible
aspects of the IVOW Technology.
SECTION
3. REPRESENTATIONS
AND WARRANTIES.
3.1 General
Representations by the Parties.
Each
party hereby represents to the other party that it is duly organized and validly
existing under the laws of its state of incorporation; that it has full
corporate power and authority to enter into this Agreement and to carry out
the
provisions hereof; that it is duly authorized to execute and deliver this
Agreement and to perform its obligations hereunder; and that this Agreement
is
legally binding upon it and enforceable in accordance with its
terms.
3.2 Additional
IVOW Warranties regarding the IVOW Technology.
(a) IVOW
hereby represents, warrants, and covenants as follows:
-2-
(i) (a)
it
possesses all right, title and interest in and to the IVOW Patent Rights,
(b) there are no outstanding liens, encumbrances, agreements or
understandings of any kind, either written, oral or implied which are
inconsistent with any provision of this Agreement, and (c) the execution,
delivery and performance of this Agreement does not conflict with, constitute
a
breach of, or in any way violate any arrangement, understanding or agreement
to
which IVOW is a party or by which IVOW is bound.
(ii) To
IVOW’s
knowledge, the practice or use of the IVOW Technology does not infringe the
intellectual property rights of any Third Party, and no Third Party has brought
or threatened any claim or other legal action against IVOW regarding the IVOW
Technology.
(iii) To
IVOW’s
knowledge, no Third Party is infringing the IVOW Technology.
(iv) To
IVOW’s
knowledge, as of the Effective Date, no patent application included within
the
IVOW Patent Rights is the subject of any pending interference, opposition,
cancellation or other protest proceeding.
(v) No
Third
Party has any license to or other right or interest in or to the IVOW
Technology, except for the Third Parties expressly identified in Exhibit
A as
licensors of Patents to IVOW.
(vi) In
addition to the other representations, warranties, and covenants set forth
in
this Agreement, to the extent any IVOW Patent Rights are in the form of a
license from a Third Party: (a) all such licensed IVOW Patent Rights are
expressly identified in Exhibit
A;
(b)
IVOW is, and has continually been, in full compliance with the terms of the
applicable license agreement with such Third Party, including, without
limitation, being current on all payments and filing obligations related to
such
licensed Patents; (c) all such licenses are fully paid-up, and VIKING will
not
owe any fees to such Third Party other than royalty amounts that are expressly
identified in applicable license agreement(s) that are assigned by IVOW to
VIKING hereunder; and, (d) each such applicable license agreement is fully
assignable by IVOW to VIKING such that all of IVOW’s rights under such license
agreement can be transferred to VIKING as set forth in this Agreement.
SECTION
4. PAYMENTS
VIKING
shall pay IVOW the amounts set forth in Exhibit
B
in
accordance with the payment terms set forth therein (the “Payments”).
The
Payments shall constitute IVOW’s full and complete compensation under this
Agreement, and shall supersede, cancel, and replace any and all payment
obligations that VIKING may have to IVOW (including, without limitation, any
royalty payments) under the Vista License Agreement or any other agreement
between the parties as of the Effective Date. To the extent any taxes, or other
governmental fees or charges (“Taxes”)
are
applicable incurred by IVOW as a result of the Payments, IVOW shall be
responsible for paying any and all such Taxes. In the event that IVOW reasonably
determines that a particular mode of conveyance or delivery of any portion
of
the IVOW Technology will reduce the imposition of any sales Taxes that might
otherwise be incurred, VIKING agrees to cooperate with IVOW by accepting such
mode of conveyance or delivery of the IVOW Technology.
-3-
SECTION
5. INDEMNIFICATION.
IVOW
shall indemnify and hold harmless VIKING and each of its officers, directors,
employees, Affiliates and agents (the “Indemnified
Parties”)
for,
from and against any and all damages, losses, expenses, costs and liabilities
(including, without limitation, interest, penalties and reasonable attorneys’
fees) (collectively, “Indemnified
Liabilities”),
and
pay each Indemnified Party on demand the full amount of any and all Indemnified
Liabilities based upon, arising out of or resulting from the failure of any
representation, covenant, or warranty of IVOW in this Agreement or any
agreement, certificate or other document delivered by IVOW in connection with
this Agreement to be true, correct and complete. The provisions of this Section
5 shall survive any termination or expiration of this Agreement, but shall
not
apply to the extent that any such breach or failure results from a breach of
VIKING of any provisions of the Vista License Agreement on or prior to the
date
hereof.
SECTION
6. CONFIDENTIAL
INFORMATION.
6.1 Confidentiality
Obligation. Each
party hereto shall maintain in confidence all confidential information disclosed
to it by the other party pursuant to this Agreement (“Confidential
Information”).
Neither party will use, disclose or grant the use of such Confidential
Information except as expressly authorized by this Agreement or as necessary
to
perform under this Agreement. Each party will obtain prior agreement from its
employees, agents, consultants or investigators to whom disclosure must be
made
to carry out such party’s obligations hereunder 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 proprietary and trade secret information to ensure that such
employees, agents, consultants and investigators 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.
6.2 Exceptions. The
obligations of confidentiality contained in Section 6.1 will not apply to the
extent that a party receiving Confidential Information (the “Receiving
Party”)
can
demonstrate by competent proof that such Confidential Information:
(a) was
already known to the Receiving Party, other than under an obligation of
confidentiality with respect thereto, at the time of receipt from the other
party;
(b) was
generally available to the public or otherwise part of the public domain at
the
time of its receipt from the other party;
(c) becomes
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; or
(d) was
received by the Receiving Party, other than under an obligation of
confidentiality, by a third party without breach of any obligations of
confidentiality with respect thereto.
-4-
6.3 Authorized
Disclosure.
Each
party may disclose the Confidential Information to the extent such disclosure
is
reasonably necessary in filing or prosecuting patent applications, prosecuting
or defending litigation, or complying with applicable laws, governmental
regulations or court orders (including without limitation regulations
promulgated by the U.S. Securities and Exchange Commission); provided,
however,
that if
such party is required to make any such disclosure of the Confidential
information as permitted under this Section 6.3 it will to the extent
practicable give reasonable advance notice to the other party of such disclosure
requirement and, except to the extent inappropriate in the case of patent
applications, will use reasonable efforts to secure confidential treatment
of
such information required to be disclosed to the extent available. Each party
may disclose Confidential Information of the other party to potential Third
Party licensees or sublicensees under the rights granted pursuant to this
Agreement or to potential Third Party investors, provided that any such
disclosure to a Third Party shall be made pursuant to written agreement between
the disclosing party and such Third Party providing obligations of
confidentiality and non-use with respect to such disclosed Confidential
Information that are commensurate in scope with those provided in this Section
6. Any disclosure permitted under this Section 6.3 shall not affect the status
of any document disclosed as Confidential Information. This Section 6 shall
survive any termination or expiration of this Agreement.
SECTION
7. TERMINATION
OF THE VISTA LICENSE AGREEMENT
The
Vista
License Agreement is hereby terminated as of the Effective Date. Following
the
Effective Date, neither party shall have any continuing obligation, duty, or
further performance under, or in connection with, the Vista License
Agreement.
SECTION
8. MUTUAL
RELEASE
(a) Except
as
set forth herein, each party, on behalf of itself and its agents, directors,
officers, employees, representatives, successors, assigns, parent corporations,
subsidiary corporations, affiliates, consultants, attorneys, and insurers,
hereby forever generally and completely releases and discharges the other party
and its agents, directors, officers, employees, representatives, successors,
assigns, parent corporations, subsidiary corporations, affiliates, consultants,
attorneys, and insurers, and all others, of and from any and all claims and
demands of every kind and nature, in law, equity or otherwise, known and
unknown, suspected and unsuspected, disclosed and undisclosed, and in particular
of and from all claims and demands of every kind and nature, known and unknown,
suspected and unsuspected, disclosed and undisclosed, for damages actual and
consequential, past, present and future, arising out of or in any way related
to
the parties’ respective obligations, activities and/or dealings with one another
or any third party at any time prior to the Effective Date, including (without
limitation) all such claims and demands arising out of the Vista License
Agreement.
(b) Except
as
set forth herein, each party hereby agrees and covenants not to xxx or to take
any action, whether by litigation, demand or otherwise, against the other party,
or any supplier, distributor, reseller, or customer of the other party (or
their
successors or assigns), regarding any cause of action arising prior to the
Effective Date, including (without limitation) any and all such causes of action
arising out of the Vista License Agreement.
-5-
(c) It
is
understood and agreed that except as set forth herein, this is a full, complete
and final general release of any and all claims described as aforesaid, and
each
party agrees that it shall apply to all unknown, unanticipated, unsuspected
and
undisclosed claims, demands, liabilities, actions or causes of action, in law,
equity or otherwise, as well as those which are now known, anticipated,
suspected or disclosed. Each party further acknowledges to the other party
that
claims or facts in addition to or different from those which are now known
or
believed to exist may later be discovered with respect to any claim such party
may have against the other party, but except as set forth herein, such party
nevertheless intends this release to be effective as a full, general
release.
(d) Each
party has been fully advised of the contents of section 1542 of the Civil Code
of the State of California, and that section and the benefits thereof are hereby
expressly waived by such party. Section 1542 reads as follows:
“Section
1542. (General
Release - Claims Extinguished.)
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.”
(e) Notwithstanding
anything expressed or implied in this Agreement, the mutual release set forth
in
this Section 8 shall not apply to any situation related to the Vista License
Agreement that would result in a breach of Section 3 of this Agreement by a
party.
SECTION
9. MISCELLANEOUS.
9.1 Assignment.
This
Agreement shall not be assignable by either party without the express written
consent of the other party, except that either party may assign its interest
hereunder without the other’s consent in connection with any merger,
reorganization or sale of all or substantially all of such party’s assets (an
“Acquisition”).
Any
attempted assignment in violation of the foregoing shall be void. This Agreement
shall be binding upon and inure to the benefit of the parties and their
permitted assigns and successors in interest.
9.2 Headings.
The
headings used in this Agreement are for convenience of reference only and are
not intended to be a part of or to affect the meaning or interpretation of
this
Agreement.
9.3 Amendment.
No
amendment or modification hereof shall be valid or binding upon the parties
unless made in writing and signed by both parties.
9.4 Force
Majeure.
Any
delays in performance by any party under this Agreement shall not be considered
a breach of this Agreement if and to the extent caused by occurrences beyond
the
reasonable control of the party affected, including but not limited to, acts
of
God, embargoes, governmental restrictions, strikes, earthquakes or other
concerted acts of workers, fire, flood, explosion, riots, wars, civil disorder,
rebellion or sabotage. The party suffering such occurrence shall immediately
notify the other party and any time for performance hereunder shall be extended
by the actual time of delay caused by the occurrence, provided such party makes
all reasonable efforts to overcome such circumstances.
-6-
9.5 Addresses.
Notices
provided for herein shall effectively be given by mailing the same by certified
or registered mail, properly addressed. For the purposes of making payments
and
giving notices, the addresses of the parties hereto are as
follows:
If
to
VIKING: Viking Systems, Inc.
0000
Xx
Xxxxx Xxxxxxx Xxxxx.
Xxxxx
000
Xxx
Xxxxx, XX 00000
If
to
IVOW: iVOW, Inc.
00000
Xx
Xxxxxx Xxxx, Xxxxx 000
Xxx
Xxxxx, XX 00000
or
to
such subsequent addresses as either party may furnish the other by giving notice
thereof as provided in this Section 9.5.
9.6 Independent
Contractors.
In
making and performing this Agreement, IVOW and VIKING act and shall act at
all
times as independent contractors and nothing contained in this Agreement shall
be construed or implied to create an agency, partnership, franchise,
joint-venture or employment relationship between IVOW and VIKING. At no time
shall one party make commitments or incur any charges or expenses for or in
the
name of the other party except as specifically provided herein.
9.7 Severability.
If any
provision or provisions of this Agreement shall be held to be invalid, illegal
or unenforceable, the parties, to the extent practicable, shall conform each
such provision to an enforceable provision that best accomplishes the original
intention of the parties, and the validity, legality and enforceability of
the
remaining provisions shall not be in any way affected or impaired
thereby.
9.8 Waiver.
Any
waiver by either party of any breach of this Agreement shall not constitute
a
waiver of any subsequent or other breach.
9.9 Applicable
Law.
This
Agreement shall be construed, interpreted, and applied in accordance with the
laws of the State of California, without reference to its conflicts of laws
principles or any other principles that would result in the application of
a
different body of law.
-7-
9.10 Entire
Agreement.
This
Agreement embodies the complete, final, and entire understanding of the parties
regarding the subject matter hereof, and, except as expressly set forth herein,
shall supersede and replace all previous and contemporaneous communications,
representations or understandings, either oral or written, between the parties
relating to the subject matter hereof. Section 5, Section 6 and any other
provisions of this Agreement that by their nature are intended to survive,
shall
survive any termination of this Agreement for any reason.
9.11 Attorney’s
Fees.
If any
legal action is brought by a party to enforce the terms of this Agreement,
the
prevailing party in such legal action shall be entitled to its reasonable
attorney’s fees, in addition to any damages awarded to such party in connection
therewith.
9.12 Counterparts.
This
Agreement may be executed in counterparts, with the same force and effect as
if
the parties had executed the same instrument.
[REMAINDER
OF PAGE INTENTIONALLY BLANK]
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IN
WITNESS WHEREOF,
the
parties hereto, through their authorized representatives, have executed this
Agreement as of the Effective Date.
VIKING
SYSTEMS, INC.
By:
/s/
Xxxxxxx X. Xxxxxx
Name:
Xxxxxxx X. Xxxxxx
Title:
Chief
Financial Officer
IVOW,
INC.
By:
/s/
Xxxxxxx Xxxxxxx
Name:
Xxxxxxx
Xxxxxxx
Title:
Vice
President, Chief Financial Officer
CRDENTIA
CORP.
By:
/s/
Xxxxx XxxXxxxx
Name:
Xxxxx
XxxXxxxx
Title: Chief
Financial Officer
-9-
EXHIBIT
A
IVOW
TECHNOLOGY
The
following items constitute the IVOW Technology that is assigned to VIKING under
the Agreement:
PATENT
PORTFOLIO
IVOW
owns
the following U.S. patents:
|
Patent
#
|
Patent
Name (14)
|
|
5,751,341
|
Stereoscopic
endoscope system
|
|
5,895,350
|
Electronic
endoscope
|
|
5,582,576
|
Electronic
endoscope with zoom lens system
|
|
5,605,532
|
Fog-free
endoscope
|
|
RE37,356
|
Endoscope
with position display for zoom lens unit and imaging
device
|
|
5,817,014
|
Electronic
endoscope with zoom lens
|
|
5,697,891
|
Surgical
retractor with accessory support
|
|
5,941,817
|
Endoscope
wherein electrical components are electrically isolated from
patient-engaging components
|
|
5,941,818
|
Endoscopic
video camera with malleable support
|
|
5,989,182
|
Device-steering
shaft assembly and endoscope
|
|
6,191,809
|
Method
and apparatus for aligning stereo images
|
|
6,292,221
|
Motorized
focusing device and viewing system utilizing same
|
|
6,313,883
|
Method
and apparatus for finite local enhancement of a video display reproduction
of images
|
|
D415,146
|
Head
mounted display
|
IVOW
maintains non-exclusive rights to use these U.S. patents through an agreement
with Xxxx Zeiss GmbH:
|
Patent
#
|
Patent
Name (3)
|
|
5,702,350
|
Adapter
for connecting a stereoscopic endoscope to electronic documentation
devices
|
|
5,612,816
|
Endoscopic
attachment for a stereoscopic viewing system
|
|
5,496,261
|
Combination
of a viewing and/or documenting apparatus and an endoscope as well
as a
method of operating the combination
|
IVOW
maintains non-exclusive rights to use this U.S. patent through an agreement
with
Xxxxxxx Xxxx GmbH:
|
Patent
#
|
Patent
Name (1)
|
|
6,490,085
|
Symmetric
anastigmatic endoscope relay system
|
-10-
IVOW
maintains non-exclusive rights to use these German patents in medical
applications through the agreement with Zeiss:
|
Patent
#
|
Patent
Name (4)
|
|
195
32 400.5
|
Stereoendoskop
unit abge win kilter Blickrichtong (Stereoendoscope yielding aligned
images)
|
|
94
15 485.6
|
Stereo
endskipischerr vorsatz zum zusammen wirken mit einem operationsmileroskop
(Stereoendoscope working as operating microscope)
|
|
197
12 645.6
|
Kupplung
zum kuppein zweier optischer einrichtugen (Coupling mechanism to
link two
optical systems)
|
|
197
33 362.1
|
Endoskopische
videokamera (Endoscopic
Videocamera)
|
Additional
Deliverables from IVOW to VIKING to be provided as part of IVOW
Technology:
|
·
|
All
patent Files
|
|
·
|
All
trademark files including Infomatix , Vista and,
CardioXXX
|
|
·
|
All
originals of agreements with XxXxxxxx and Zeiss
|
|
·
|
Asset
purchase agreement of American Surgical Technologies and associated
files
|
|
·
|
Asset
purchase agreement of GDE and associated
files
|
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EXHIBIT
B
PAYMENT
SCHEDULE AND TERMS
VIKING
shall pay IVOW the following amounts (which shall collectively constitute the
Payments under the Agreement):
1.
Total
Amount of Payments: $500,000
a.
First
Payment -- Final Royalty Payment -- $150,000
This
payment shall be made by VIKING to IVOW on or before November 15,
2006.
b.
Second
Payment - Final Asset Payment -- $350,000
This
payment shall be made by VIKING to IVOW on or before November 30,
2006.
All
Payments shall be in U.S. Dollars. The parties shall mutually agree upon the
method of payment.
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