NON-EXCLUSIVE LICENSE AGREEMENT FOR IMAGING PATENTS BY AND BETWEEN LIGHTLAB IMAGING, LLC AND LANTIS LASER, INC. dated as of August 8, 2001
FOR
IMAGING
PATENTS
BY
AND
BETWEEN
LIGHTLAB
IMAGING, LLC
AND
XXXXXX
LASER, INC.
dated
as
of August 8, 2001
SECTION
1: RECITALS
WHEREAS
LightLab is developing and has rights to certain medical imaging technologies,
known as Optical Coherence Tomography (OCT).
WHEREAS
Licensee is in the business of dental imaging.
WHEREAS
Licensee desires to obtain and LightLab desires to grant, in accordance with
the
terms of this Agreement, a non-exclusive license in the Field and in the
Territory and in order for Licensee to manufacture, use, and sell in the
commercial market products using OCT.
NOW
THEREFORE, for and in consideration of the mutual promises and covenants
contained herein and for other good and valuable consideration, the receipt
and
adequacy of which are hereby acknowledged, the parties hereto agree as
follows:
SECTION
2: DEFINITIONS
As
used
in this Agreement, the following terms shall have the following
meanings:
“Affiliate”
shall
mean any entity, other than CZI, that directly or indirectly through one or
more
intermediaries controls, or is controlled by, or is under common control with,
a
party hereunder by ownership or control of at least fifty percent (50%) of
the
voting stock or other ownership. Unless otherwise specified, the term “Licensee”
includes Licensee’s Affiliates.
“Agreement”
shall
mean this Non-Exclusive License Agreement between LightLab and
Licensee.
“CZI”
shall
mean Xxxx Zeiss, Inc.
“CZI
License Agreement”
shall
mean that certain Exclusive License Agreement by and between CZI and LightLab
dated February 17, 1998, together with that certain License Agreement dated
December 1, 1992, between MIT as licensor and Advanced Ophthalmic Devices,
Inc.
as licensee, First Amendment thereto dated August 27, 1993, by which Xxxxxxxx
Instruments, Inc. became the licensee thereunder, Second Amendment thereto
dated
February 27, 1998, by which Xxxx Zeiss, Inc. became the licensee
thereunder, and Third Amendment thereto dated February 27, 1998, effecting
certain modifications as between MIT and Xxxx Zeiss, Inc.
“Confidential
Information”
shall
mean any confidential or proprietary information furnished by one party (the
“Disclosing
Party”)
to the
other party (the “Receiving
Party”)
in
connection with this Agreement, provided
that
such
information is specifically designated as confidential as provided in Section
12
of this Agreement. Such Confidential Information shall include, without
limitation, the terms of this Agreement, any reports under Section 7 of this
Agreement, and any records under Section 8 of this Agreement.
“Effective
Date”
shall
mean the date on which the last party has signed this agreement.
2
“Field”
shall
mean the field of general dentistry, excluding oral surgery and imaging through
a microscope.
“First
Commercial Sale”
shall
mean the first sale for use or consumption by the general public of any Licensed
Product in any country based on the required marketing and pricing approval
granted by the governing health authority of such country.
“Licensed
CZI Intellectual Property”
shall
mean those rights and licenses granted by CZI to LightLab Imaging pursuant
to
the CZI License Agreement.
“Licensed
MIT Intellectual Property”
shall
mean those rights and licenses granted by MIT to LightLab Imaging pursuant
to
the MIT License Agreement.
“Licensed
Processes”
shall
mean processes that could not be developed, performed, used, sold, or offered
for sale without infringing at least one Valid Claim included within the Patent
Rights.
“Licensed
Products”
shall
mean products that could not be developed, manufactured, used, sold, offered
for
sale, or imported without infringing at least one Valid Claim included within
the Patent Rights or products made or services provided in accordance with
or by
means of Licensed Processes.
“Licensee”
shall
mean Xxxxxx Laser, Inc., a corporation organized under the laws of [STATE],
having its principal offices at 0000 Xxxxxxxxx Xxxxxxxx, Xxxxxx, XX
00000.
“LightLab”
shall
mean LightLab Imaging, LLC, a limited liability corporation licensed under
the
laws of Delaware, having its principal offices at 000 Xxxxxxxxx Xxxx, 0xx Xxxxx,
Xxxxxxxx, Xxxxxxxxxxxxx 00000-0000.
“MEET’
shall
mean the Massachusetts Eye and Ear Infirmary.
“MGH”
shall
mean the General Hospital Corporation, doing business as the General
Hospital.
“MIT”
shall
mean the Massachusetts Institute of Technology.
“MIT
License Agreement”
shall
mean that certain Patent License Agreement by and between MIT and LightLab
dated
February 20, 1998.
“Net
Sales”
shall
mean the amount billed, invoiced, or received (whichever occurs first) for
Licensed Products or Licensed Processes, less:
(a) customary
trade, quantity or cash discounts and non-Affiliate brokers’ or agents’
commissions actually allowed and taken;
(b) amounts
repaid or credited by reason of rejection or return;
3
(c) to
the
extent separately stated on purchase orders, invoices, or other documents of
sale, taxes levied on and/or other governmental charges made as to production,
sale, transportation, delivery or use and paid by or on behalf of Licensee;
and
(d) reasonable
charges for delivery or transportation provided by third parties and cost of
insurance in transit paid by or on behalf of Licensee, if separately
stated.
Net
Sales
also shall include the fair market value of any non-cash consideration received
by Licensee for Licensed Products or Licensed Processes. In any transfers of
licensed Products between Licensee and an Affiliate, Net Sales shall be
calculated based on the final sale of the Licensed Product to an independent
Third Party.
In
the
event that any Licensed Product is sold or a Licensed Process is provided as
a
component of a combination of functional elements or processes, for the purpose
of determining royalty payments on such combination, Net Sales shall be
determined by multiplying the Net Sales of the combination by the fraction
A/(A+B), where A is the average amount billed, invoiced or received for the
Licensed Product or Licensed Process portion of the combination when sold or
provided separately during the applicable royalty reporting period and in the
country in which the sale was made, and B is the aggregate average amount
billed, invoiced or received for the other functional elements or processes
of
the combination sold separately during the applicable royalty reporting period
and in the country in which the sale was made. In the event that no separate
sale of either such above-designated Licensed Product/Licensed Process or such
above-designated other functional elements or processes of the combination
is
made during the applicable royalty reporting period and in the country in which
the sale was made, Net Sales shall be determined by multiplying the Net Sales
of
the combination by the fraction C/(C+D) where C is the standard fully-absorbed
cost of the Licensed Product or Licensed Process portion of such combination
and
D is the standard fully-absorbed cost of the other functional elements or
processes (such fully-absorbed cost determination will be made in accordance
with GAAP). Licensee shall promptly deliver to LightLab a written report
detailing such calculation. The Parties shall resolve any dispute that LightLab
has with the calculation made by Licensee in accordance with Section 13 of
this
Agreement.
Net
Sales
shall occur on the earlier of receipt of payment by Licensee or sixty (60)
days
after a Licensed Product or Licensed Process is billed or invoiced.
“Net
Service Income”
shall
mean Service Income less Licensee’s actual demonstrated costs of providing the
Service.
“OCT”
shall
mean optical coherence tomography including, without limitation, optical
coherence tomography which is covered by a Valid Claim.
“Patent
Rights”
shall
mean the applications and patents as listed in Appendix A of this Agreement,
the
allowed claims of such applications, the inventions described and claimed
therein, and any divisions, continuations, continuations-in-part to the extent
the claims are directed to subject matter specifically described in the
applications and patents listed in Appendix A, patents issuing thereon or
reissues thereof, and any and all foreign patents and patent applications
corresponding thereto, all to the extent owned or controlled by
LightLab.
4
“Release”
shall
mean the first offering for sale of a Licensed Product in writing or at a trade
show or the first quotation to a prospective customer or a dealer of a price
for
a Licensed Product.
“Service”
shall
mean the utilization of Licensed Products or Licensed Processes by Licensee
to
provide services to a Third Party.
“Service
Income”
shall
mean the total financial consideration received by Licensee as a result of
a
Service; provided,
however,
that
Service Income shall not include payments received by Licensee from purchasers
of Licensed Products that[, on a case-by-case basis,] the parties mutually
agree
represent reasonable consideration for routine maintenance or repairs to
Licensed Products provided by Licensee through a separate maintenance agreement
between Licensee and such a purchaser.
“Territory”
shall
mean the World.
“Third
Party”
shall
mean any entity other than LightLab and Licensee and their respective
Affiliates.
“Valid
Claim”
shall
mean either (i) a claim of an issued and unexpired patent included within the
Patent Rights that has not been held permanently revoked, unenforceable, or
invalid by a decision of an agency or a court of competent jurisdiction,
unappealable or unappealed within the time allowed for appeal, and which has
not
been admitted to be invalid or unenforceable through reissue or disclaimer
or
otherwise; or (ii) a claim of a pending patent application included within
the
Patent Rights that was filed with a good faith belief in its patentability
and
that has not been abandoned or finally rejected without the possibility of
appeal or refiling and that has been pending for less than ten (10) years from
its priority date.
SECTION
3: REPRESENTATIONS
3.1. Authorization.
Each
party represents and warrants to the other that: (i) it has the legal right
and
power to enter into this Agreement and to extend the rights and/or licenses
granted to the other in this Agreement, (ii) the performance of such obligations
will not conflict with its charter documents or any agreements, contracts or
other arrangements to which it is a party, (iii) it is organized, validly
existing and in good standing under the laws of the applicable jurisdiction
and
has taken all necessary action to authorize the execution, delivery and
performance of this Agreement, and (iv) upon the execution and delivery of
this
Agreement, this Agreement shall constitute a valid and binding obligation of
such party, enforceable in accordance with its terms, except as enforceability
may be limited by applicable bankruptcy, insolvency, reorganization, moratorium
or similar laws affecting creditors’ and contracting parties’ rights generally
and except as enforceability may be subject to general principles of equity
(regardless of whether such enforceability is considered in a proceeding in
equity or at law).
3.2. Licensee’s
Intent to Develop.
Licensee is prepared and intends to diligently develop Licensed Products and
to
bring such products to market. Licensee understands and agrees
that the rights conveyed under this Agreement are patent rights and do not
include technical information or know-how such as specific designs or
manufacturing expertise.
5
3.3. LightLab’s
Name Change.
LightLab represents and warrants that, as of the Effective Date, it has
undergone an administrative name change which has no substantive effect on
its
rights and abilities to sublicense under the MIT License Agreement and the
CZI
License Agreement.
SECTION
4: GRANT
OF RIGHTS
4.1. Grant
of Non-Exclusive Commercial License.
LightLab hereby grants to Licensee and Licensee accepts, subject to the terms
and conditions hereof, a non-exclusive commercial license under Patent Rights
in
the Field to make, have made, use, sell, offer for sale, and import in the
Territory the Licensed Products, and to practice the Licensed Processes, during
the term of this Agreement (the “License”). Nothing in this Agreement shall be
construed as a granting to Licensee by implication, estoppel, or otherwise
of
any license or rights under any patent, copyright, trade secret, trademark
or
other intellectual property right of LightLab other than the rights granted
under the License.
4.2. No
Right to Sublicense.
The
License shall not include the right to grant sublicenses.
SECTION
5: CONDITIONS
5.1. MIT
and CZI License Agreements.
Licensee acknowledges that all or part of the Patent Rights are licensed by
LightLab from MPT pursuant to the MIT License Agreement and from CZI pursuant
to
the CZI License Agreement, respectively. In that regard:
(a) LightLab
represents to Licensee as of the Effective Date that LightLab has delivered
to
Licensee true copies of the relevant portions of the MIT License Agreement
and
CZI License Agreement as amended, such agreements in the form so delivered
have
not been further amended, modified or superseded in any respect by oral or
written agreement and are in full force and effect.
(b) Licensee
hereby agrees to incorporate herein the obligations of Section 2.4(b), and
all Sections referenced in Section 2.4(b), of the CZI License Agreement and
Section 2.8, and all Sections referenced in Section 2.8, of the MIT License
Agreement herein as a sublicensee under the CZI License Agreement and the MIT
License Agreement, respectively. The relevant Sections from each of the CZI
License Agreement and MIT License Agreement are attached hereto at Appendices
B
and C, respectively.
5.2. MIT/CZI
Retained Rights.
Licensee acknowledges that its rights in the Licensed MIT Intellectual Property
and Licensed CZI Intellectual Property are variously subject to the rights
of
MIT and CZI pursuant to the MIT License Agreement and the CZI License Agreement,
the relevant portions of which were delivered to Licensee by LightLab Imaging
prior to the Effective Date. See Appendices B and C.
6
5.3. Manufacturing.
Licensee agrees that any Licensed Products used or sold in the United States
will be manufactured substantially in the United States.
5.4. Licensee’s
Efforts to Market.
Licensee shall use diligent efforts to effect introduction of the Licensed
Products into the commercial market as soon as practicable, consistent with
sound and reasonable business practice and judgment; thereafter, until the
expiration of this Agreement, Licensee shall endeavor to keep Licensed Products
reasonably available to the public.
SECTION
6: ROYALTIES
AND OTHER PAYMENTS
6.1. Licensed
Products Royalty.
In
consideration of the right and License granted herein, Licensee shall pay to
LightLab during the term of this Agreement a royalty of three-and-a-half percent
(3.5%) of Net Sales of Licensed Products sold by Licensee.
6.2. Service
Income Royalty.
For
provision of Services under Valid Claims, Licensee shall pay a royalty of
twenty-five percent (25%) of Net Service Income from each and every Third Party
to which such Services are provided.
6.3. Minimum
Royalty Requirements.
In
order to maintain the License, Xxxxxx Laser must make Net Sales that generate
the following minimum royalties for each year after the beginning of the Term,
as defined in Section 9.1, below:
Year
1
|
$
|
50,000
|
to
|
||||
Year
2
|
$
|
150,000
|
|||||
Year
3
|
$
|
600,000
|
|||||
Year
4
|
$
|
600,000
|
|||||
Year
5
|
$
|
600,000
|
6.4. Non-Compete.
If
Licensee introduces for sale a product, developed either solely by Licensee
or
with others, that employs OCT as defined in this Agreement, such product will
be
deemed to be a Licensed Product subject to the terms and conditions of this
Agreement, including, without limitation, the obligation for Xxxxxx Laser to
pay
LightLab Imaging royalties on the Net Sales of such product as though such
product were a Licensed Product developed under this Agreement.
6.5. Royalty
Payments.
Licensee shall make quarterly payments of the royalties due to LightLab for
the
previous quarter at the same time that Licensee delivers to LightLab the Royalty
Reports detailed in Section 7.3, below.
6.6. Blocked
Payments.
Licensee shall promptly inform LightLab if government regulations prevent
Licensee from receiving payments due Licensee from customer in a foreign country
for Licensed Products or Licensed Processes. At LightLab’s option, Licensee
shall either
(i) continue to report the amounts payable to LightLab but shall have no
obligation to pay those amounts until the government regulations which prevented
Licensee from receiving payment have changed to permit such receipt, or (ii)
deposit the amount due to LightLab in a bank, as designated by LightLab, in
the
particular country from which Licensee is unable to receive
payments.
7
6.7. Payment
of Drafting Fees.
Upon
execution of this Agreement, Licensee will pay to LightLab the reasonable legal
fees associated with the drafting of this Agreement, which have been estimated
by the parties at $7,000.
6.8. LightLab’s
Receipt of Payments.
All
payments due hereunder shall be deemed received when funds are credited to
LightLab’s bank account and shall be payable by check or wire transfer in United
States dollars. Conversion of foreign currency to U.S. dollars shall be made
at
the conversion rate existing in the United States (as reported in The
New York Times or
The
Wall Street Journal) on
the
last working day that falls on or prior to the due date of the Royalty Report.
No transfer, exchange, collection or other charges shall be deducted from such
payments.
6.9. Withholding
and Similar Taxes.
The
payment to LightLab of the royalties, fees, compensation, and other payments
provided for in this Agreement shall be free and clear of any deduction or
withholding for or on account of any taxes, charges, or remittance fees, whether
levied by federal, state or municipal governments anywhere in the world, or
by
other authorities. If any such deduction or withholding is required with respect
to any payment due to LightLab under this Agreement, such payment shall be
increased by an additional amount such that the net amount actually received
by
LightLab, after such deduction or withholding, will equal the full amount that
LightLab would have received if no such deduction or withholding had been
required. The payment of any taxes, charges or fees required to be deducted
or
withheld from royalties, fees, compensations or other payments due to LightLab,
and the filing of any information or tax returns with respect thereto, shall
be
the responsibility of Licensee, who shall promptly forward to LightLab an
official receipt (or a certified copy) or other documentation reasonably
acceptable to LightLab evidencing such payment and who shall be liable to
LightLab with respect to any amounts, fines, or penalties arising out of or
resulting from any failure, delay, or error in discharging the aforesaid
obligations.
6.10. Late
Payment Charge.
Late
payments by Licensee shall be subject to a charge of one and one-half percent
(1.5%) per month.
6.11. Most
Favored Licensee.
LightLab agrees that if it should hereafter grant to any third party, other
than
an Affiliate of LightLab or the United States Government or any agency or
division thereof, a different license under Patent Rights in the Field to make,
have made, use, sell, offer for sale, and import the Licensed Products and
to
practice the Licensed Processes in the Territory, on substantially the same
terms as the license hereunder, but providing for more favorable royalty rates
than those provided to Licensee hereunder, LightLab shall provide Licensee
with
such more favorable royalty rates.
SECTION
7: REPORTING
7.1. Progress
Reports.
No
later than sixty (60) days after June 30 of each calendar year, Licensee shall
provide to LightLab a written annual Progress Report describing progress on
research and development, regulatory approvals, manufacturing, marketing and
sales with respect to Licensed Products and Licensed Processes during the most
recent twelve (12) month period ending June 30 and plans for the forthcoming
year. If multiple technologies are covered by the Licensed Products and Licensed
Processes, the Progress Report shall provide the information set forth above
for
each technology. Licensee shall also provide any reasonable additional data
LightLab requires to evaluate Licensee’s performance.
8
7.2. Dates
of First Sale.
Licensee shall report to LightLab the date of First Commercial Sale of Licensed
Products (or results of Licensed Processes) in each country within thirty (30)
days of occurrence.
7.3. Royalty
Reports.
Licensee shall submit to LightLab within forty-five (45) days after each
calendar quarter ending March 31, June 30, September 30, and December 31, a
Royalty Report setting forth for such quarter at least the following
information:
(a) the
number of Licensed Products manufactured, leased, and sold by Licensee in each
country;
(b) total
xxxxxxxx and amounts actually received for such Licensed Products;
(c) an
accounting for all Licensed Processes used or sold;
(d) deductions
applicable to determine the Net Sales thereof;
(e) the
amount of Service Income received by Licensee and an accounting of all deduction
to yield Net Service Income; and
(f) the
amount of royalty due for the past quarter under this Agreement, or, if no
royalties are due to LightLab for any reporting period, the statement that
no
royalties are due.
(g) reference
to the case numbers and patent numbers which cover the actual Licensed Products
and Licensed Processes sold, so that LightLab can comply with its obligations
under the MIT License Agreement and the CZI License Agreement.
If
multiple technologies are covered by the license granted hereunder, Licensee
shall specify which Patent Rights are utilized for each Licensed Product and
Licensed Process included in the Royalty Report.
Each
Royalty Report shall be certified as correct by an officer of Licensee and
shall
include a detailed listing of all deductions from royalties.
7.4. Corporate
Information.
In the
event of a merger, consolidation or sale or transfer of all or substantially
all
of its assets, Licensee shall notify LightLab in writing within thirty (30)
days
of such event.
7.5. Notification
of Infringement by Third Parties.
Licensee and LightLab shall each promptly notify the other of any infringement
or misappropriation or alleged infringement or misappropriation of Patent Rights
of which Licensee or LightLab becomes aware.
9
7.6. Notification
of Patent Lawsuit.
Licensee shall inform LightLab in writing if LightLab or Licensee is named
as
the defendant in a suit alleging invalidity or noninfringement of the Patent
Rights.
7.7. Confidentiality
of Reports.
Except
as required in order for LightLab to comply with its reporting obligations
under
the MIT License Agreement and the CZI License Agreement, all reports made
pursuant to this Section shall be maintained in confidence by LightLab in
accordance with Section 12 of this Agreement; provided, however, that LightLab
may include in its usual reports annual amounts of royalties paid.
SECTION
8: RECORD
KEEPING
8.1. Records.
Licensee shall keep accurate records (together with supporting documentation)
of
Licensed Products or Licensed Processes made, used or sold under this Agreement,
appropriate to determine the amount of royalties due to LightLab hereunder.
Such
records shall be retained for at least five (5) years following the end of
the
reporting period to which they relate.
8.2. Audits.
The
records described in Section 8.1 shall be available during normal business
hours
upon reasonable advance notice for examination by a certified public accountant
selected by LightLab, and reasonably acceptable to Licensee, for the sole
purpose of verifying reports and payments hereunder. In conducting examinations
pursuant to this Section 8.2, LightLab’s accountant shall have access to all
records which LightLab reasonably believes to be relevant to the calculation
of
royalties under Section 6.
8.3. Confidentiality
of Audit.
LightLab’s accountant shall not disclose to LightLab any information other than
information relating to the accuracy of reports and payments made
hereunder.
8.4. Costs
of Audit.
Such
examination by LightLab’s accountant shall be at LightLab’s expense, except that
if such examination shows an underreporting or underpayment in excess of five
percent (5%) for any twelve (12) month period, then Licensee shall pay the
cost
of such examination as well as any additional sum that would have been payable
to LightLab had the Licensee reported correctly, plus interest on said sum
at
the rate of one and one-half percent (1.5%) per month.
SECTION
9: TERM
AND TERMINATION
9.1. Term.
This
Agreement, unless otherwise terminated as provided herein, shall remain in
effect for five (5) years following whichever of the following events occurs
first:
(a) Licensee’s
Release of a Licensed Product;
(b) Licensee’s
First Commercial Sale of a Licensed Product; or
(c) the
second anniversary of the Effective Date.
9.2. Termination
by LightLab.
LightLab may terminate this Agreement as follows:
(a) if
Licensee does not meet its minimum royalty obligations under
Section 6.3;
10
(b) if
Licensee does not make a payment due hereunder and fails to cure such
non-payment (including the payment of interest in accordance with Section 6.10)
within ten (10) days after the date of notice in writing of such non-payment
by
LightLab;
(c) if
Licensee defaults in its obligations under Section 11 to procure and
maintain insurance;
(d) if
Licensee shall become insolvent, shall make an assignment for the benefit of
creditors, or shall have a petition in bankruptcy filed for or against it.
Such
termination shall be effective immediately upon LightLab giving written Notice
to Licensee;
(e) if
Licensee is convicted of a felony; or
(f) if
Licensee defaults in the performance of any material obligations under this
Agreement, other than as provided in subsections (a) through (f), above, and
the
default has not been remedied within thirty (30) days after the date of notice
in writing of such default by LightLab.
9.3. Termination
in Part by Lice.
(a) Licensed
MIT Intellectual Property
i) LightLab
shall have the right to immediately terminate this Agreement with respect to
the
Licensed MIT Intellectual Property upon the termination or expiration of the
MIT
License Agreement, or upon the loss of LightLab’s rights to sublicense the
Licensed MIT Intellectual Property.
ii) In
the
event that LightLab terminates this Agreement in part pursuant to Subsection
9.3(a)(i), above, this Agreement shall terminate only with respect to the rights
and licenses granted to Licensee by LightLab to the Licensed MIT Intellectual
Property, and all rights and licenses granted to Licensee by LightLab to the
Licensed CZI Intellectual Property shall remain in full force and effect, except
as otherwise provided herein.
(b) Licensed
CZI Intellectual Property
i) LightLab
shall have the right to immediately terminate this Agreement with respect to
the
Licensed CZI Intellectual Property upon the termination or expiration of the
CZI
License Agreement, or upon the loss of LightLab’s rights to sublicense the
Licensed CZI Intellectual Property.
ii) In
the
event that LightLab terminates this Agreement in part pursuant to Subsection
9.3(b)(i), above, this Agreement shall terminate only with respect to the rights
and licenses granted to Licensee by LightLab to the Licensed CZI Intellectual
Property, and all rights and licenses granted to Licensee by LightLab to the
Licensed WT Intellectual Property shall remain in full force and effect, except
as otherwise provided herein.
11
9.4. Termination
by Licensee.
Licensee may terminate this Agreement by giving ninety (90) days advance written
notice of termination to LightLab.
9.5. Effect
of Termination.
Upon
termination, all provisions of this License, except for those identified in
this
Section 9.5 shall terminate immediately, and Licensee shall submit a final
Royalty Report to LightLab and any royalty payments invoiced by LightLab shall
become immediately payable. Sections 8, 9.5, 10, 11.1, 11.3, 12, 13, 14.1,
and
15 of this Agreement shall survive termination.
SECTION
10: DISCLAIMER
OF WARRANTIES, INDEMNIFICATION, AND LEGAL COMPLIANCE
10.1. No
Warranty of Patent Rights.
LightLab does not warrant the validity of the Patent Rights licensed hereunder
and makes no representations whatsoever with regard to the scope of the licensed
Patent Rights or that such Patent Rights may be exploited by Licensee or an
Affiliate without infringing other patents. LightLab shall not be required
to
file any patent application, secure any patent, or maintain any patent in force
and shall not be obligated to bring or prosecute any action or suit against
any
Third Party for infringement.
10.2. Disclaimer
of Warranties.
EXCEPT
AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, LIGHTLAB IMAGING, ITS
DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES, MAKE NO REPRESENTATIONS AND
EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT
NOT
LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE ABSENCE OF LATENT
OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL
BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY LIGHTLAB IMAGING
THAT
THE PRACTICE BY LICENSEE OF THE LICENSES GRANTED HEREUNDER SHALL NOT INFRINGE
THE PATENT RIGHTS OF ANY THIRD PARTY. WITHOUT LIMITING THE GENERALITY OF THE
FOREGOING, LIGHTLAB IMAGING DOES NOT WARRANT THAT THE USE OF LICENSED PRODUCTS
OR THE PRACTICE OF THE LIGHTLAB IMAGING PATENT RIGHTS LICENSED HEREUNDER DOES
NOT INFRINGE ANY PATENT OR OTHER RIGHTS OWNED BY THIRD PARTIES, AND LIGHTLAB
IMAGING SHALL NOT BE OBLIGATED TO DEFEND OR SAVE HARMLESS LICENSEE OR ANY OTHER
PERSON AGAINST ANY SUIT, DAMAGE, CLAIM OR DEMAND BASED ON ACTUAL OR ALLEGED
INFRINGEMENT OF ANY PATENT OR OTHER RIGHTS OWNED BY A THIRD PARTY, OR ANY UNFAIR
TRADE PRACTICE, RESULTING FROM THE EXERCISE OR USE OF ANY RIGHT OR LICENSE
GRANTED HEREUNDER. LIGHTLAB IMAGING DOES NOT WARRANT THE VALIDITY OR
ENFORCEABILITY OF ANY PATENT WHICH MAY BE PART OF LIGHTLAB IMAGING PATENT
RIGHTS.
10.3. Indemnification.
Licensee shall indemnify, defend and hold harmless LightLab, MIT, MGH, MEET,
CZI, and their current or former directors, officers, trustees, employees,
and
agents and their respective successors, heirs and assigns (collectively, the
“Indemnitees”), against any liability, damage, loss or expenses (including
reasonable attorneys’ fees and expenses of litigation) incurred by or imposed
upon any or all of the Indemnitees in connection with any claims, suits,
actions, demands or judgments arising out of any theory of liability (including,
without limitation, product liability actions in the form of tort, warranty,
or
strict liability and regardless of whether such action has any factual basis)
concerning any product, process or service made, used or sold by Licensee
pursuant to any license granted under this Agreement (an “Indemnified Claim”),
provided that:
(a) each
Indemnitee that intends to claim indemnification under this Section
shall:
12
i) notify
Licensee of an Indemnified Claim promptly after the Indemnitee’s receipt of
notice of the claim, except that the Indemnitee’s Failure to provide prompt
notice to Licensee of an Indemnified Claim shall not relieve Licensee of its
obligations to indemnify the Indemnitee, except to the extent that Licensee
is
actually prejudiced by such failure; and
ii) provide
Licensee, at no cost to the Indemnitee, with all reasonably necessary
assistance, information, and authority to perform the above.
(b) upon
the
notice contemplated by paragraph 10.3(a)(i), above, Licensee may, at its option,
exercise control over and choose counsel for the defense of the Indemnified
Claim, and all related settlement negotiations. However, the Indemnitee will
be
entitled to employ counsel separate from Licensee’s counsel if the Indemnitee
and Licensee or a court of competent jurisdiction reasonably determine that
a
conflict of interest exists which makes representation by Licensee’s chosen
counsel not advisable or permitted; provided, however that the Indemnitee shall
seek Licensee’s consent, which shall not unreasonably be withheld or delayed, to
the appointment of the Indemnitee’s counsel and the rates to be charged. In such
event, the reasonable fees and disbursements of the Indemnitees’ counsel will be
paid by Licensee.
10.4. Legal
Compliance.
(a) Licensee
acknowledges that it is subject to United States laws and regulations
controlling the export of technical data, computer software, laboratory
prototypes and other commodities (including the Arms Export Control Act, as
amended and the United States Department of Commerce Export Administration
Regulations). The transfer of such items may require a license from the
cognizant Agency of the United States Government and/or written assurances
by
Licensee that Licensee shall not export data or commodities to certain foreign
countries without prior approval of such agency. LightLab neither represents
that a license shall not be required nor that, if required, it shall be
issued.
(b) Licensee
shall:
i) comply
with all applicable laws and regulations, including all United States laws
and
regulations controlling the export of commodities
13
and
technical data, shall be solely responsible for any violation of such laws
and
regulations by Licensee or its Affiliates, and shall defend and hold the
Indemnitees harmless in the event of any legal action of any nature occasioned
by such violation;
ii) obtain
all regulatory approvals required for the manufacture and sale of Licensed
Products and Licensed Processes;
iii) register
or record this Agreement as is required by law or regulation in any country
where the license is in effect.
SECTION
11: INSURANCE
11.1. Requirement
of Insurance.
Beginning at the time any such product, process or service is being commercially
distributed or sold by Licensee or by an Affiliate or agent of Licensee,
Licensee shall, at its sole cost and expense, and subject to MIT’s approval,
procure and maintain commercial general liability insurance in amounts not
less
than two million dollars ($2,000,000) per incident and three million dollars
$3,000,000 annual aggregate and naming the Indemnitees, MIT, MGH, and the MEEI
as additional insureds. During clinical trials of any such product, process
or
service, Licensee shall, at its sole cost and expense, procure and maintain
commercial general liability insurance in such equal or lesser amount as
LightLab shall require, naming the Indemnitees as additional insureds. Such
commercial general liability insurance shall be written by a reputable insurance
company authorized to do business in the Commonwealth of Massachusetts and
shall
provide at least: (i) product liability coverage; and (ii) broad form
contractual liability coverage for Licensee’s indemnification under this
Agreement. If Licensee elects to self-insure all or part of the limits described
above (including deductibles or retentions which are in excess of two hundred
and fifty thousand dollars ($250,000) annual aggregate) such self-insurance
program must be acceptable to LightLab, MIT, MGH, MEEI, and the Risk Management
Foundation, under their sole discretion. The minimum amounts of insurance
coverage required shall not be construed to create a limit of Licensee’s
liability with respect to its indemnification under this Agreement.
11.2. Evidence
and Replacement.
Licensee shall provide LightLab with written evidence of the insurance described
in Section 11.1 upon request of LightLab. Licensee shall provide LightLab with
written notice at least fifteen (15) days prior to the cancellation, non-renewal
or material change in such insurance; if Licensee does not obtain replacement
insurance providing comparable coverage within such fifteen (15) day period,
LightLab shall have the right to terminate this Agreement effective at the
end
of such fifteen (15) day period without notice or any additional waiting
periods.
11.3. Maintenance
Beyond Termination.
Licensee shall maintain the commercial general liability insurance described
in
Section 11.1 beyond the expiration or termination of this Agreement during:
(a)
the period that any product, process, or service, relating or developed pursuant
to this Agreement is being commercially distributed or sold by Licensee or
by an
Affiliate or agent of Licensee; and (b) a reasonable period after the period
referred to in Subsection 113(a), above, which in no event shall be less than
fifteen (15) years.
SECTION
12: CONFIDENTIALITY
12.1. Designation.
Confidential Information that is disclosed in writing shall be marked with
a
legend indicating its confidential status (such as “Confidential”
or
“Proprietary”).
Confidential Information that is disclosed orally or visually shall be
documented in a written notice prepared by the Disclosing Party and delivered
to
the Receiving Party within thirty (30) days of the date of disclosure; such
notice shall summarize the Confidential Information disclosed to the Receiving
Party and reference the time and place of its disclosure.
14
12.2. Obligations.
For a
period of ten (10) years after disclosure of any Confidential Information,
the
Receiving Party shall not disclose such Confidential Information to any Third
Party, except that the Receiving Party may disclose or permit the disclosure
of
any Confidential Information to its directors, officers, employees, consultants,
and advisors who are obligated to maintain the confidential nature of such
Confidential Information and who need to know such Confidential Information
in
order for the Receiving Party to fulfill its obligations under this Agreement
and may reproduce the Confidential Information only to the extent necessary
for
such disclosures to directors, officers, employees, consultants, and advisors
with all such reproductions being considered Confidential Information. In
addition, Licensee may disclose or permit the disclosure of the terms of this
Agreement to potential investors that are considering an investment in
Licensee’s dental imaging business, but only for the purposes of allowing such
potential investors to consider such an investment.
12.3. Exceptions.
The
obligations of the Receiving Party under Subsection 12.2. above shall not apply
to the extent that the Receiving Party can demonstrate that certain Confidential
Information (i) was in the public domain prior to the time of its disclosure
under this Agreement; (ii) entered the public domain after the time of its
disclosure under this Agreement through means other than an unauthorized
disclosure resulting from an act or omission by the Receiving Party; (iii)
was
independently developed or discovered by the Receiving Party without use of
the
Confidential Information as contemporaneously documented; (iv) is or was
disclosed to the Receiving Party at any time, whether prior to or after the
time
of its disclosure under this Agreement, by a Third Party having no fiduciary
relationship with the Disclosing Party and having no obligation of
confidentiality with respect to such Confidential Information; or (v) is
required to be disclosed to comply with applicable laws or regulations, or
with
a court or administrative order, provided
that
the
Disclosing Party receives reasonable prior written notice of such disclosure.
The Receiving Party will promptly notify the Disclosing Party when the Receiving
Party learns of any of the Disclosing Party’s Confidential Information through
any of the methods described in exceptions (i) through (iv), above.
12.4. Ownership
and Return.
The
Receiving Party acknowledges that the Disclosing Party (or any Third Party
entrusting its own information to the Disclosing Party) claims ownership of
its
Confidential Information in the possession of the Receiving Party. Upon the
expiration or termination of this Agreement, and at the request of the
Disclosing Party, the Receiving Party shall return to the Disclosing Party
all
originals, copies, and summaries of documents, materials, and other tangible
manifestations of Confidential Information in the possession or control of
the
Receiving Party, except that the Receiving Party may retain one copy of the
Confidential Information in the possession of its legal counsel solely for
the
purpose of monitoring the parties’ obligations under this
Agreement.
12.5. Entitlement
to Injunctive Relief.
Each
party acknowledges that its obligations under this Section of the Agreement
are
unique, and that, if it should default on such obligations, it would be
extremely impracticable to measure the resulting damages to the other party;
accordingly, the non-defaulting party, in addition to any other available rights
or remedies, shall be entitled to preliminary and permanent injunctive relief
from any court of competent jurisdiction to enforce the provisions of this
Section.
15
SECTION
13: DISPUTE
RESOLUTION
13.1. Mediation
and Arbitration.
Except
for the right of either party to apply to a court of competent jurisdiction
for
a temporary restraining order, a preliminary injunction, or other equitable
relief to preserve the status quo or prevent irreparable harm, any and all
claims, disputes or controversies arising under, out of, or in connection with
the Agreement, including any dispute relating to patent validity or
infringement, which the parties shall be unable to resolve within sixty (60)
days shall be mediated in good faith. The party raising such dispute shall
promptly advise the other party of such claim, dispute or controversy in a
writing which describes in reasonable detail the nature of such dispute. By
not
later than five (5) business days after the recipient has received such notice
of dispute, each party shall have selected for itself a representative who
shall
have the authority to bind such party, and shall additionally have advised
the
other party in writing of the name and title of such representative. By not
later than ten (10) business days after the date of such notice of dispute,
the
party against whom the dispute shall be raised shall select a mediation firm
in
the Boston area and such representatives shall schedule a date with such firm
for a mediation hearing. The parties shall enter into good faith mediation
and
shall share the costs equally. If the representatives of the parties have not
been able to resolve the dispute within fifteen (15) business days after such
mediation hearing, then any and all claims, disputes or controversies arising
under, out of, or in connection with this Agreement, including any dispute
relating to patent validity or infringement, shall be resolved by final and
binding arbitration in Boston, Massachusetts by mutually agreed upon alternative
dispute resolution mechanisms, or if unable to agree upon such mechanisms,
under
the rules of the American Arbitration Association, or the Patent Arbitration
Rules if applicable, then obtaining. The arbitrators shall have no power to
add
to, subtract from or modify any of the terms or conditions of this Agreement,
nor to award punitive damages. Any award rendered in such arbitration may be
enforced by either party in either the courts of the Commonwealth of
Massachusetts or the United States District Court for the District of
Massachusetts, to whose jurisdiction for such purposes LightLab and Licensee
each hereby irrevocably consents and submits.
13.2. No
Waiver of Timely Performance of Obligations.
Notwithstanding the foregoing, nothing in this Article shall be construed to
waive the parties’ rights under Section 12.5 or any rights of timely performance
of any obligations existing under this Agreement.
16
SECTION 14: PUBLICITY AND PATENT MARKING
14.1. No
Use
of Names and Marks.
Licensee shall not use LightLab’s name or insignia, or any adaptation of them,
or the name of any of LightLab’s inventors in any advertising, promotional or
sales literature without the prior written approval of LightLab. Neither shall
Licensee use the names or trademarks of MIT, MIT Lincoln Laboratory, MGH, or
MEEI, nor any adaptation thereof, nor the names of any of their employees,
in
any advertising, promotional or sales literature without prior written consent
obtained from MIT, MIT Lincoln Laboratory, MGH, or MEEI, or said employee,
in
each case. Nothing herein shall be construed as giving Licensee any interest
in
or right to use LightLab’s, MIT’s, MGH’s, or MEEI’s trademarks, trade names, or
trade dress, and Licensee shall not use LightLab’s trademarks, trade names, or
trade dress.
14.2. Patent
Marking.
Licensee shall xxxx the Licensed Products sold in the United State with all
applicable United States patent numbers. All Licensed Products shipped to or
sold in other countries shall be marked in such a manner as to conform with
the
patent laws and practices of the country of manufacture or sale. LightLab shall
provide Licensee, within thirty (30) days of the date of this Agreement, or
within thirty (30) days of the date of issuance of a patent, whichever is later,
with the appropriate patent numbers that LightLab wishes to include on any
Licensed Products to be sold by Licensee.
14.3. Press
Release.
LightLab and Licensee will mutually agree to the contents of a press release,
to
be disseminated to the public, announcing this Agreement. (Appendix
D)
SECTION
15: MISCELLANEOUS
15.1. No
Transfer or Assignment by Licensee.
Without
the prior written approval of LightLab in each instance, neither this Agreement
nor the rights granted hereunder shall be transferred or assigned in whole
or in
part by Licensee to any person whether voluntarily or involuntarily, by
operation of law or otherwise, except that Licensee may assign this Agreement
in
connection with a merger, consolidation or sale or transfer of all or
substantially all of its assets. This Agreement shall be binding upon the
respective successors, legal representatives and assignees of LightLab and
Licensee.
15.2. Third
Party Beneficiaries.
LightLab and Licensee acknowledge that M.I.T. and CZI are intended third party
beneficiaries of this Agreement, are entitled to the same rights and protections
as LightLab, and are entitled to enforce this Agreement directly against
Licensee.
15.3. Governing
Law.
This
Agreement, and the performance of the parties hereto, shall be construed and
governed according to the laws of the Commonwealth of Massachusetts, excluding
the conflicts of laws provisions thereof.
15.4. Force
Majeure.
Neither
party will be responsible for delays resulting from causes beyond the reasonable
control of such party, including without limitation fire, explosion, flood,
war,
strike, or riot, provided that the non-performing party uses commercially
reasonable efforts to avoid or remove such causes of nonperformance and
continues performance under this Agreement with reasonable dispatch whenever
such causes are removed.
17
15.5. Notices.
Any
notices to be given hereunder shall be sufficient if signed by the party (or
party’s attorney) giving same and either: (i) delivered in person; (ii) mailed
certified mail return receipt requested; or (iii) faxed to other party if the
sender has evidence of successful transmission and if the sender promptly sends
the original by ordinary mail, in any event to the following
addresses:
If
to
Licensee:
Xxxxxx
Laser, Inc.
0000
Xxxxxxxxx Xxxxxxxx
Xxxxxx,
XX 00000
Fax:
(000) 000-0000
Attn:
Xxxx Xxxxx
If
to
LightLab:
LightLab
Imaging, LLC
000
Xxxxxxxxx Xxxx, 0xx Xxxxx
Xxxxxxxx,
XX 00000-0000
Fax:
(000) 000-0000
Attn:
Xxxx Xxxxxx
and
a
copy to:
Xxxxxx
& Dodge LLP
Xxx
Xxxxxx Xxxxxx
Xxxxxx,
XX 00000
Fax:
(000) 000-0000
Attn:
Xxxxxxx X. Xxxxx
By
such
notice either party may change their address for future notices.
Notices
delivered in person shall be deemed given on the date delivered. Notices sent
by
fax, as provided above, shall be deemed given on the date faxed. Notices mailed
shall be deemed given on the date postmarked on the envelope.
15.6. Counterparts.
This
Agreement may be executed in one or more counterparts, each of which shall
be
deemed an original, and all of which together shall be deemed to be one and
the
same instrument.
15.7. Headings.
All
headings are for convenience only and shall not affect the meaning of any
provision of this Agreement.
15.8. Severability.
Should
a court of competent jurisdiction later hold any provision of this Agreement
to
be invalid, illegal, or unenforceable, and such holding is not reversed on
appeal, if any, it shall be considered severed from this Agreement. All other
provisions, rights and
obligations shall continue without regard to the severed provision, provided
that the remaining provisions of this Agreement are in accordance with the
intention of the parties.
18
15.9. No
Waiver.
The
failure of either party to assert a right hereunder or to insist upon compliance
with any term or condition of this Agreement shall not constitute a waiver
of
that right or excuse a similar subsequent failure to perform any such term
or
condition by the other party.
15.10. Entire
Agreement.
This
Agreement constitutes the entire understanding between the parties and neither
party shall be obligated by any condition or representation other than those
expressly stated herein or as may be subsequently agreed to by the parties
hereto in writing.
IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by
their duly authorized representatives.
For
LightLab Imaging LLC:
|
For
Xxxxxx Laser, Inc.:
|
||
Name:
Xxxx Xxxxxx
Title:
President & CEO
Date:
______________________, 20__
|
Name:
Xxxxxxx X. Xxxxx
Title:
CEO
Date:
______________________, 20__
|
||
Signature
|
Signature
|
19
Appendix
A
The
following comprise Patent Rights:
Title
|
Status
|
||
1
|
“Method
And Apparatus For Optical Imaging With Means For Controlling The
Longitudinal Range Of The Sample”, X.X. Xxxxxxx, X. Xxxxx, X.X. Xxxxxxxx,
C.A. Puliafito, X.X. Xxx, X.X. Xxxxxxx.
|
Issued
US Patent 5,321,501, June 14, 1994. Filed 4/29/92.
CIP
of 4/29/91 filing.
|
|
2
|
“Method
and Apparatus for Performing Optical Measurements”, X.X. Xxxxxxx, X.
Xxxxx, X.X. Xxxxxxxx, C.A. Puliafito, X.X. Xxx,
X.X. Xxxxxxx.
|
Issued
US Patent 5,459,570, Oct. 14, 1995. Filed 3/16/93.
Continuation
of 4/29/91 filing.
|
|
3
|
“Method
and Apparatus for Performing Optical Imaging and Measurements”, X.X.
Xxxxxxx, X. Xxxxx, X.X. Xxxxxxxx, C.A. Puliafito, X.X. Xxx, X.X.
Xxxxxxx.
|
Issued
in Europe and Japan
|
|
4
|
“Method
and Apparatus for Acquiring Images using a CCD Detector Array and
No
Transverse Scanner”, X.X. Xxxxxxx
|
Issued
US Patent 5,465,147, Nov. 7, 1995. Filed 6/2/94. CIP of 4/29/91
filing.
|
|
|
|||
5
|
“Method
and Apparatus for Performing Optical Measurements using a Fiber Optic
Imaging Guidewire, Catheter or Endoscope”, X.X. Xxxxxx, M.E. Xxxxxxxxx,
X.X. Xxxxxxx, X.X. Xxxxxxx, B.E. Xxxxx, X.X. Xxxxxxxx.
|
Issued
US Patent 6,134,003, Oct. 17, 2000. Filed 2/27/96.
|
|
|
|||
6
|
“Methods
and Apparatus for Forward-Directed Optical Scanning Instruments for
the
Acquisition of Optical Imaging and Delivery of Optical Radiation,” X.X.
Xxxxxxx, X.X. Xxxxxxx, B.E. Xxxxx, M.E. Xxxxxxxxx, X.X. Xxxxxxxx,
X. X.
Xxxxxxx
|
Pending
Patent.
|
|
|
|||
7
|
“Grating
Based Phase Control Optical Delay Line”, X.X. Ternary, B.E. Xxxxx, X.X.
Xxxxxxxx
|
Issued
US Patent 6,111,645,
August,
200 0.
|
|
8
|
“Method
and Apparatus for Performing Optical Measurements using a Rapidly
Frequency Tuned Laser”, X. X. Xxxxxxx, X. X. Xxxxx
|
Issued
US Patent 5,956,355
September
21, 1999.
|
|
9
|
“Short
Coherence Length, Doppler Velocimetry System”, X. Xxxxxxxx, X. Xxxxxxxx
|
Issued
US Patent 5,501,226, 3/26/96. Filed 10/16/94. Issued EPO and
Japan
|
|
10
|
“Short
Coherence Length, Doppler Velocimetry System”, X. Xxxxxxxx, X.
Xxxxxxxx
|
Issued
US Patent 5,549,114, 8/27/96. Filed 10/23/95. Issued EPO and
Japan
|
|
11
|
“Optical
Coherence Tomography Assisted Surgical Apparatus”, X. Xxx, X.
Xxxxxxxx
|
Issued
US Patent 6,004,314 December 21,
1999.
|
20
Title
|
Status
|
||
12
|
“OCT-Assisted
Surgical Microscope with Multi- Coordinate Manipulator”, X. Xxxxxxxx, X.
Xxxxxxx, X. Xxxxx, X. Xxxxx
|
Issued
US Patent 5,795,295
|
|
13
|
“Optical
Coherence Tomography with New Interferometer”, X. Xxxxx, X. Xxxxxxxx, X.
Xxx
|
Issued
US Patent 6,053,613
|
|
14
|
“Method
and Apparatus for Simultaneous Measuring the Length and Refractive
Error
of and Eye”, X. Xxxxxxxx
|
Issued
US Patent 5,975,699
|
|
15
|
Measurement
of Lens Characteristics”, X. Xxxxxxxx, X. Xxxxxxxx, X. Xxx
|
Issued
US Patent 5,469,261 11/21/95.
|
|
16
|
“Fundus
Illumination Apparatus Formed from Three Separated Radiation Path
Systems”, X. Xxx, X. Xxxxxxxx
|
Issued
US Patent 5,506,634, 4/9/96.
|
|
17
|
“Optical
Coherence Tomography Corneal Mapping Apparatus”, X. Xxxxxxxx, Xxx
Xxx
|
Issued
US Patent 5,491,524, 2/13/96. Filed 10/5/94.
|
|
18
|
“Method
and Apparatus for Optical Coherence Tomographic Fundus Imaging”, X.
Xxxxxxx
|
Pending
Patent.
|
|
19
|
“Gaze
Tracking using Optical Coherence Tomography”, X.
Xxxxxxxxxx
|
Issued
US Patent 5,644,642, 7/1/97. Filed 4/3/95.
|
|
20
|
“Optical
Coherence Tomography Assisted Ophthalmologic Surgical Microscope”, X. Xxx,
X. Xxxxxxx
|
Issued
US Patent 5,493,109, 2/20/96. Filed 8/18/94.
|
|
21
|
“Method
and Apparatus for Optical Coherence Tomographic Fundus Imaging without
Vignetting”, X. Xxxxxxxx, Xxx Xxx.
|
Issued
US Patent 5,537,162, 6/16/96. Filed 12/17/93.
|
|
22
|
“Method
and Apparatus for High Speed Longitudinal Scanning in Imaging Systems”,
X.X. Xxxxxxx, X.X. Xxxxxxxx
|
Issued
US Patent 6,191,862 2/20/01
|
|
23
|
“Fiber
Optic Needle Probes for Optical Coherence Tomography Imaging”, C. Pitris,
X.X. Xxxxxxx, X. Xx, X. Xxxxxxxxx, X.X. Xxxxxxx, X. XxXxxxxx, X.X.
Xxxxxxxx
|
Patent
Pending
|
|
24
|
“Micro-Lens
for Miniature Optical Probes”, X.X. Xxxxxxx, X.X. Xxxxxxxx, E XxXxxxxx,
X.X. Xxxxxxx, X. Xxxxx
|
Patent
Pending
|
|
25
|
“Method
and Apparatus for Performing Optical Frequency Domain Reflectometry”, X.X.
Xxxxxxx, X.X. Xxxxx
|
Issued
US Patent 6,160,826. 12/12/00. Filed 1999.
|
|
27
|
“Broadband
Light Source System and Method Thereof”, X. Xxxxxxx
|
Patent
Pending
|
21
Title
|
Status
|
||
28
|
“Apparatus
and Method for Selective Data Collection and Signal to Noise Ratio
Enhancement Using Optical Coherence Tomography”, X. Xxxxxx X. Xxxxxxx, X.
Xxxxxxxx, X. Xxxxxxx
|
Patent
Pending.
Filed
4/6/01
|
|
29
|
“Fiber
Optic Endoscopic Gastrointestinal Probe”, X. XxXxxxxx, X.
Xxxxxxx
|
Patent
Pending
|
00
Xxxxxxxx
X
Relevant
Sections of CZI License Agreement
1.2. “CDT
FIELD” shall mean all uses of optical coherence tomography and other
interferometric imaging and ranging techniques except those reserved for the
CZI
Field or Light Microscopy Field, the CDT Field including, without limitation,
instrumentation and disposables for use in biomedical and non-biomedical
applications, including internal body optical imaging and ranging for diagnostic
or interventional procedures through natural or man-made openings in the body
via catheters, endoscope probes, throchars, probes, needles, laproscopes, or
the
like, including imaging of the vasculature, pulmonary tract, genitourinary
tract, gastrointestinal tract, reproductive tract and rheumatology.
1.8. “LIGHT
MICROSCOPY FIELD” shall mean the use of optical coherence tomography in a
classical light microscopy application, including, without limitation, medical
and non-medical light microscope applications such as surgical microscopes
(except neurological microscopes) developmental biology, non-destructive
evaluation of materials, industrial applications (including, but not limited
to,
non-destructive testing, inspection and evaluation on-line and off-line), and
histology through conventional microscope platforms (e.g., standard, inverted
or
conical).
1.9. “CZI
FIELD” shall mean diagnostic and therapeutic instrumentation and disposables for
use of optical imaging and ranging technology in ophthalmology and near-surgical
microscopes for in vivo operation in the open field (i.e., surgical fields
directly accessible from outside the body or through large surgical
openings).
2. GRANT
TO
CDT
2.1. Exclusive
License Grant.
Subject
only to the CZI License Agreement, and the terms and conditions hereof, CZI
hereby grants to CDT and CDT hereby accepts, a worldwide, royalty-free (except
with respect to any royalty obligation due the licensor of CZI Patent Rights
to
CZI), exclusive license (with the right to sublicense subject to CZI’ prior
approval, which approval shall not be unreasonably withheld), under the CZI
Patent Rights, to make and have made, to use and to have used, to import and
have imported, to sell and have sold the CZI Licensed Products, and to practice
and otherwise use the CZI Licensed Processes, in the CDT Field, for the term
of
this Agreement.
2.2. Non-Exclusive
License Grant.
Subject
only to the CZI License Agreement, and the terms and conditions hereof, CZI
hereby grants to CDT and CDT hereby accepts, a worldwide, royalty-free (except
with respect to any royalty obligation due the licensor of CZI Patent Rights
to
CZI), non-exclusive license (with the right to sublicense subject to CZI prior
approval, which approval shall not be unreasonably withheld), under the CZI
Patent Rights, to make and have made, to use and have used, to import and have
imported, to sell and have sold the CZI Licensed Products, and to practice
and
otherwise use the CZI Licensed Processes, in the Light Microscopy Field, for
the
term of this Agreement.
23
2.3. CZI
Technology License Grant.
Subject
only to the terms and conditions hereof, CZI hereby grants to CDT and CDT hereby
accepts, a worldwide, royalty-free (except with respect to any royalty
obligation due the licensor of CZI Technology to CZI), non-exclusive license
(with the right to sublicense subject to CZI’ prior approval, which approval
shall not be unreasonably withheld), under the CZI Technology, to make and
have
made, to use and have used, to import and have imported, to sell and have sold
the CZI Licensed Products in the CDT Field and the Light Microscopy Field for
the term of this Agreement.
2.4. Conditions
to License Grants.
The
granting and acceptance of the license pursuant to Sections 2.1 and 2.2 are
subject to the following conditions:
(a)
|
MIT
Rights.
CDT acknowledges that all or part of the CZI Patent Rights are licensed
by
CZI from MIT pursuant to the CZI License Agreement. CDT hereby agrees
to
incorporate herein the obligations of Article 2.9 of the CZI License
Agreement as a sublicense under the CZI License Agreement. Articles
2, 5,
7, 8, 9, 10, 12, 13 and 15 of such CZI License Agreement are attached
hereto as Exhibit C. CDT hereby assumes the obligation to pay MIT
any
applicable royalty payments due from a sublicensee pursuant tot the
CZI
License Agreement.
|
(b)
|
Sublicenses.
All Sublicenses granted by CDT hereunder shall be in writing and
shall:
|
(i) advise
Sublicensees of the CZI’s and MIT’s rights under this Agreement;
and
(ii) be
expressly subject to Sections 2.4, 6.1, 8.1 and 11.1, and Articles 10 and 12
hereof, substituting Sublicensee for CDT.
In
the
event of termination of this Agreement, CZI shall recognize the licenses under
CZI Patent Rights and CZI Technology granted in such sublicenses, provided
that
CZI shall have the right to terminate the sublicense upon sixty (60) days’
written notice of a material breach by Sublicensee which is not cured prior
to
expiration of such sixty (60) day period, and provided further that CZI shall
not assume, and shall not be responsible to any Sublicensees for, any
representations, warranties or obligations of CDT made to any Sublicensees
other
than the licenses granted under CZI Patent Rights and CZI Technology as
authorized herein.
(c)
|
Marking.
CDT agrees to xxxx and to cause any Sublicensees to xxxx, any CZI
Licensed
Products made, used or sold by it or them with any notice of patent
rights
necessary or desirable under applicable law to enable the CZI Patent
Rights to be enforced to the maximum degree in any country where
CZI
Licensed Products are made, imported, used or
sold.
|
2.5. Improvements.
CZI
agrees to notify CDT in writing of any patents or patent applications arising
from work performed by or for CZI and related to or useful in the CDT Field,
and
which CZI is free to license to CDT (hereinafter called “CZI Improvements”).
Such CZI Improvements shall, as the case may be, automatically become part
of
the CZI Patent Rights or CZI Technology licensed hereunder.
24
2.6. Licenses
by CZI Outside the Field.
Nothing
herein shall be construed to prevent CZI from licensing any CZI Patent Right
or
CZI Technology to any other party for the purpose of making, having made, using
or selling any product or method outside of the CDT Field; . provided,
however,
that
CZI shall provide CDT with written notice of its intent to license any CZI
Patent Right or CZI Technology outside of the CDT Field and CDT shall have
sixty
(60) days to advise CZI of its interest in obtaining a license to such CZI
Patent Right or CZI Technology outside of the CDT Field and an additional thirty
(30) days to negotiate reasonable terms of a license agreement.
2.7 Disclosure
of Technical Information.
Subject
to Section 8 of this Agreement, as soon as reasonably possible following the
Effective Date, but in no event later than one (1) month after the Effective
Date, upon request by CDT, CZI shall disclose to CDT its Technical Information
relating to the CZI Patent Rights and CZI Technology in the CDT Field in its
possession or control on the Effective Date. CZI shall continue to disclose
additional Technical Information in a timely fashion to CDT from time to time
during the term of this Agreement.
2.8. Right
of First Refusal.
Notwithstanding the foregoing licenses granted to CDT pursuant to this Article
2, CDT hereby agrees not to market, distribute, or enter into any agreements
with third parties to market or distribute,. any products developed by CDT
in
the Light Microscopy Field without first offering CZI a right of first refusal
with respect to the distribution and marketing of such products (the “Right of
First Refusal”). Upon development of a product subject to this Section 2.8, CDT
shall provide written notice to CZI of the new product and its specifications.
Upon receipt of CDT’s notice, CZI shall have thirty (30) days (the “Election
Period”) to determine whether or not to pursue a marketing and distribution
contract for such product with CDT. If CZI decides to exercise its Right of
First Refusal with respect to the product (i) it shall notify CDT in writing
of
its election within the Election Period, (ii) propose a marketing, sales and
distribution plan in a timely manner acceptable to CDT’s Board of Directors,
(iii) negotiate the agreement in good faith and on competitive terms and (iv)
the agreement shall contain a termination provision if CZI fails to meet
reasonable performance criteria.
6.1.
Notice
of Infringement.
Each
party shall inform the other party promptly in writing of any alleged
infringement of which it shall have knowledge by a third party of any patents
within the CZI Patent Rights in the CDT Field and provide any available evidence
of infringement.
8.1. Confidential
Information.
Any
party receiving Confidential Information shall maintain the confidential and
proprietary status of such Confidential Information, keep such Confidential
Information and each part thereof within its possession or under its control
sufficient to prevent any activity with respect to the Confidential Information
that is not specifically authorized by this Agreement, use commercially
reasonable efforts to prevent the disclosure of any Confidential Information
to
any other person, and use commercially reasonable efforts to ensure that such
Confidential Information is used only for those purposes specifically authorized
herein; provided,
however,
that
such restriction shall not apply to any Confidential Information which is (a)
independently developed by the receiving party, (b) in the public domain at
the
time of its receipt or thereafter becomes part of the public domain through
no
fault of the receiving party, (c) received without obligation of confidentiality
from a third party having the right to disclose such information, (d) released
from restriction of this Section 8.1 by the express written consent of the
disclosing party, (e) disclosed to any permitted assignee, permitted sublicensee
or permitted subcontractor of either party hereunder (if such assignee,
sublicensee of subcontractor is subject to the provisions of this Section 8.1
or
comparable provisions of such other documents), or (f) required by law, statute
rule or court order to be disclosed (the disclosing party shall, however, use
commercially reasonable efforts to obtain confidential treatment of any such
disclosure). The obligations set forth in this Section 8.1 shall survive for
a
period of five (5) years from the termination or expiration of this Agreement.
Without limiting the generality of the foregoing, each of the parties shall
use
commercially reasonable efforts to obtain confidentiality agreements from its
respective employees and agents, similar in scope to this Section 8.1, to
protect the Confidential Information. Notwithstanding the foregoing, each party
shall be deemed to have satisfied its obligations under this Section 8.1 if
it
protects the Confidential Information of the other party with the same degree
of
care that it uses to protect its own similar Confidential
Information.
25
10 TERM
AND
TERMINATION OF AGREEMENT
10.1. Term.
The
term of this Agreement shall commence on the effective Date and remain in full
force and effect thereafter unless otherwise terminated as provided for
hereunder (the “Term”). With respect to the CZI Patent Rights and CDT Patent
Rights, any license given thereto under this Agreement shall remain in effect
until the earlier to occur of (i) the expiration of the last to expire patent
within the respective CZI Patent Rights or CDT Patent Rights, or (ii) the
termination or expiration of this Agreement.
10.2. Termination
for Cause.
Either
party shall have the right to terminate this Agreement immediately by giving
the
other party written notice of such termination in the following
circumstances:
(a)
|
The
admission by the other party in writing of its insolvency or bankruptcy,
or its making of an assignment of substantially all of its assets
for the
benefit of creditors, or its application for the appointment of a
trustee
or receiver for such party, or the appointment of a trustee or receiver
for such party, or the institution by or against such party of any
bankruptcy, reorganization, arrangement, insolvency or liquidation
proceedings or other proceedings for relief under any bankruptcy
law or
similar law for the relief of debtors which is allowed against such
party, or is consented to or is not dismissed, stayed or otherwise
nullified within sixty (60) days after the institution thereof;
and
|
26
(b)
|
The
other party shall have breached any other material term or condition
of
this Agreement and such breach remains uncured within sixty (60)
days of
notice thereof, or if not susceptible of cure within sixty (60) days,
within such longer period as such breach could have reasonably been
cured,
but in no event to exceed an additional sixty (60)
days.
|
(c)
|
CDT
shall have the right to immediately terminate this Agreement with
respect
to the CDT Patent Rights and CDT Technology upon the termination
or
expiration of the CZI License Agreement, or upon the loss of exclusivity
of the “Patent Rights” licensed under the CZI License
Agreement.
|
(d)
|
CZI
hall have the right to immediately terminate this Agreement with
respect
to the CZI Patent Rights and CZI Technology upon the termination
or
expiration of the CDT License Agreement, or upon the loss of exclusivity
of the “Patent Rights” licensed under the CDT License
Agreement.
|
10.3 Effect
of Termination.
(a)
|
Termination
of Rights.
Except as otherwise provided for under this Section 10.3 all licenses
and
rights granted by either party hereunder to the other party shall
terminate upon termination of this
Agreement.
|
(b)
|
Termination
for Breach.
In the event that one party rightfully terminates this Agreement
because
of a material breach by the other party pursuant to Section 10.2(b)
hereof, this Agreement shall terminate only with respect to the rights
and
licenses granted by the non-breaching party to the breaching party,
and
all rights and licenses granted hereunder by the breaching party
to the
non-breaching party shall remain in full force and
effect.
|
(c)
|
Termination
by CDT Pursuant to Section 10.s(c).
In the event that CDT rightfully terminates this Agreement pursuant
to
Section 10.2(c) hereof, this Agreement shall terminate only with
respect
to the rights and licenses granted to CZI by CDT to the CDT Patent
Rights
and CDT Technology, and all rights and licenses granted to CDT by
CZI to
the CZI Patent Rights and CZI Technology shall remain in full force
and
effect.
|
(d)
|
Termination
by CZI Pursuant to Section 10.2(d).
In the event that CZI rightfully terminates this Agreement pursuant
to
Section 10.s(d) hereof, this Agreement shall terminate only with
respect
to the rights and licenses granted to CDT by CZI to the CZI Patent
Rights
and CZI Technology, and all rights and licenses granted to CZI by
CDT to
the CDT Patent Rights and CDT Technology shall remain in full force
and
effect.
|
27
(e)
|
Disclosure
of Technical Information.
All obligations of the parties to disclose Technical Information
under
this Agreement pursuant to Sections 2.7 and 3.7 hereof shall terminate
upon termination of this Agreement for any
reason.
|
(f)
|
Survival.
The provisions of Sections 1, 2.4, 3.4, 4.2 (with respect to CZI
Patent
Rights prosecuted by CDT), 5.2 (with respect to CDT Patent Rights
prosecuted by CZI), 8.1, 9.1, 9.2, 10.3, 11 and 12 shall survive
termination or expiration.
|
(g)
|
Prior
Obligations.
Termination of this Agreement for any reason shall not release either
party from any obligation theretofore
accrued.
|
(h)
|
Survival
of Sublicenses.
Notwithstanding the provisions of this Section 10.3, sublicenses
in effect
as of the date of termination shall survive pursuant to the provisions
of
Sections 2.4(b) and 3.4(b).
|
11.1. CDT
Indemnity.
Except
to the extent that any claims or causes of action are based solely upon alleged
infringement or misappropriation resulting from use of patents or other
intellectual property rights of CZI, CDT shall defend and indemnify and hold
CZI, its trustees, officers, employees and appointees harmless from and against
any and all actions, suits, claims, demands, judgments and other liabilities,
including attorney’s fees until CDT assumes defense as described below, arising
out of (a) the development, manufacture, storage, sale or other distribution,
or
any other use of CZI Licensed Products or exercise of rights granted hereunder
by CDT or it’s Affiliates, Sublicensees, distributors, agents or
representatives; (b) the use by end-users and other third parties of CZI
Licensed Products; or (c) any representation, warranty or statement by CDT
or
its Affiliates, Sublicensees, distributors, agents or representatives,
concerning CZI or CZI Patent Rights not approved by CZI in writing, provided
that CZI promptly notifies CDT of any such claim coming to its attention and
that it cooperates with CDT at CDT’s expense in the defense of such claims or
actions. If any such claims or actions are made, CZI shall be defended at CDT’s
sole expense by counsel selected by CDT, at CDT’s sole expense, subject to CZI’s
approval, such approval not to be unreasonably withheld. CZI shall not agree
to
any settlement without CDT’s consent, and CDT shall have sole control of the
defense.
12 GENERAL
12.1. Assignments.
Neither
party shall assign this Agreement or its rights hereunder or delegate its
obligations hereunder, to any third party without prior written consent of
the
other party, which consent shall not be unreasonably withheld, except that
either party may assign its rights under this Agreement in connection with
a
merger, consolidation, or sale of substantially all of the assets of such party
related to the subject matter hereof, provided that the assignee so notifies
the
other party and agrees in writing to assume all of the obligations of such
party
hereunder.
28
12.2. Force
Major.
Neither
party will be responsible for delays resulting from acts beyond the control
of
such party, provided that the non-performing party uses reasonable commercial
efforts to avoid or remove such causes of nonperformance and continues
performance hereunder with reasonable dispatch whenever such causes are
removed.
12.3.
Binding
Effect.
This
Agreement shall be binding upon and inure to the benefit of and be enforceable
by the parties hereto and their respective successors and permitted assigns,
as
well as any Affiliates of the parties that have accepted in writing the terms,
including the obligations, of this Agreement.
12.4. Amendments
and Waivers.
This
Agreement may be amended and any of its terms or conditions may be waived only
by a written instrument executed by the parties or, in the case of a waiver,
by
the party waiving compliance. The failure of either party at any time or times
to require performance of any provision hereof shall in no manner affect its
rights at a later time to enforce the same. No waiver by either party of any
condition or term in any one or more instances shall be construed as a further
or continuing waiver of such condition or term or any other condition or
term.
12.5. Governing
Law.
The
interpretation and application of the provisions of this Agreement shall be
governed by the laws of The Commonwealth of Massachusetts.
12.6. Notices.
Any
notices given pursuant to this Agreement shall be in writing and shall be deemed
to have been given and delivered upon the earlier of (i) when received at the
address set forth below, or (ii) three (3) business days after mailed by
certified or registered mail postage prepaid and property addressed, with return
receipt requested, or (iii) on the day when sent by facsimile as confirmed
by
certified or registered mail. Notices shall be delivered to the respective
parties as indicated.
If
to
CZI:
Xxxx
Zeiss, Inc.
Xxx
Xxxxx
Xxxxx
Xxxxxxxxx,
XX 00000
Attn:
President
Tel:
000-000-0000
Fax:
000-000-0000
with
a
copy to:
If
to
CDT:
00X
Xxxxxx Xxxx
Xxxxx,
XX
00000
Tel:
000-000-0000
29
with
a
copy to:
Xxxxxx
& Dodge LPL
Xxx
Xxxxxx Xxxxxx
Xxxxxx,
XX 00000
Attn:
Xxxxxxx Xxxxxx, Esq.
Tel:
000-000-0000
Fax:
000-000-0000
or
such
other address as either party may request in writing.
12.7. Partial
Illegality.
If any
provision of this Agreement is declared void, illegal or unenforceable, the
provision shall be deemed amended as necessary to conform to applicable laws
or
regulations, or if it cannot be so amended without materially altering the
intention of the parties, the remainder of the Agreement shall continue in
full
force and effect as if the offending provisions were not contained
herein.
12.8. Entire
Agreement.
This
Agreement constitutes the entire understanding between the parties with respect
to its subject matter and supersedes ad replaces all prior agreements,
understandings, writings, and discussions. This Agreement may be amended only
by
a written instrument executed by the parties.
30
Appendix
C
Relevant
Sections of MIT License Agreement
1
-
DEFINITIONS
1.1. “CDT
FIELD OF USE” shall mean all fields of use.
1.12. “NON-Z
FIELD OF USE” shall mean all fields of use except Medical Devices.
2
-
GRANT
2.1. (a) M.I.T.
hereby grants to LICENSEE the right and license for the NON-Z FIELD OF USE
to
practice under the Z PATENT RIGHTS and, to the extent not prohibited by other
patents, to make, have made, use, lease, sell and import Z LICENSED PRODUCTS
and
to practice the Z LICENSED PROCESSES, until the expiration of the last to expire
of the Z PATENT RIGHTS, unless this Agreement shall be sooner terminated
according to the terms hereof.
(b) M.I.T.
hereby grants to LICENSEE the right and license for the CDT FIELD OF USE to
practice under the CDT PATENT RIGHTS and, to the extent not prohibited by other
patents, to make, have made, use, lease, sell and import CDT LICENSED PRODUCTS
and to practice the CDT LICENSED PROCESSES, until the expiration of the last
to
expire of the CDT PATENT RIGHTS, unless this Agreement shall be sooner
terminated according to the terms hereof.
2.2. LICENSEE
agrees that LICENSED PRODUCTS leased or sold in the United States shall be
manufactured substantially in the United States.
2.3. In
order
to establish a period of exclusivity (the “EXCLUSIVE PERIOD”) for LICENSEE,
M.I.T. hereby agrees that it shall not grant any other license to make, have
made, use, lease, sell and import LICENSED PRODUCTS or to utilize LICENSED
PROCESSES subject to the royalty-free, nonexclusive license rights of the United
States Government per FAR 52.227-11, during the period of time commencing with
the EFFECTIVE DATE and extending to the end of the term or terms for which
any
LICENSED PATENT RIGHTS have been or shall be issued, unless sooner terminated
as
hereinafter provided.
2.4. M.I.T.,
MGH, and MEEI reserves the right to practice under the LICENSED PATENT RIGHTS
for non-commercial patient care, educational, and research
purposes.
2.5. LICENSEE
shall have the right to enter into sublicensing agreements for the rights,
privileges and licenses granted hereunder only during the EXCLUSIVE PERIOD
of
this Agreement. Such sublicenses may extend past the expiration date of the
EXCLUSIVE PERIOD of this Agreement, but any exclusivity of such sublicenses
shall expire upon the expiration of the EXCLUSIVE PERIOD. Upon any termination
of this Agreement, sublicensees’ rights shall also terminate, subject to
Paragraphs 13.6 and 13.7 herein.
2.6. LICENSEE
agrees to forward to M.I.T. copies of sublicenses LICENSEE intends to grant
prior to the execution of such sublicense. M.I.T. shall have the right to grant
or to withhold its consent to execute said sublicense, which consent shall
not
unreasonably be withheld. M.I.T. agrees to notify LICENSEE, in writing, of
its
decision concerning said proposed sublicense no later than fourteen (14) days
after receiving it. Failure to so notify LICENSEE in writing shall mean that
M.I.T. grants its consent.
31
2.7. LICENSEE
agrees that any sublicense to Xxxx Zeiss, Inc. for the CDT PATENT RIGHTS shall
require Xxxx Zeiss, Inc. to report and pay royalties directly to M.I.T. in
the
manner and amounts specified in the M.I.T./ZEISS LICENSE on NET SALES of
LICENSED PRODUCTS and LICENSED PROCESSES covered by the CDT PATENT RIGHTS made
by Xxxx Zeiss, Inc., and ii) sublicenses granted by Xxxx Zeiss, Inc. to the
CDT
PATENT RIGHTS. M.I.T. and LICENSEE agree that only a single royalty as specified
in paragraph 4.1 (d) of the M.I.T./ZEISS LICENSE is payable to M.I.T. if the
products are covered by the Z PATENT RIGHTS, the CDT PATENT RIGHTS, or both
the
Z PATENT RIGHTS and the CDT PATENT RIGHTS. M.I.T. and LICENSEE agree that only
a
single sublicense fee, as specified in paragraph 4.1 (e) of the M.I.T./ZEISS
LICENSE is payable to M.I.T. if the sublicense is to the Z PATENT RIGHTS, the
CDT PATENT RIGHTS, or both the Z PATENT RIGHTS and the CDT PATENT
RIGHTS.
2.8. LICENSEE
agrees to incorporate terms and conditions substantively similar to Articles
2,
5, 8, 9, 10, 12, and 15 of this Agreement into its sublicense agreements, so
that these Articles shall be binding upon such sublicensees as if they were
parties to this Agreement.
2.9. LICENSEE
agrees to forward to M.I.T. a copy of any and all sublicense agreements promptly
upon execution by the parties.
2.10. LICENSEE
shall not receive from sublicensees anything of value in lieu of cash payments
in consideration for any sublicense under this Agreement, without the express
prior written permission of M.I.T.
2.11. Nothing
in this Agreement shall be construed to confer any rights upon LICENSEE by
implication, estoppel or otherwise as to any technology or LICENSED PATENT
RIGHTS of M.I.T. or any other entity other than the LICENSED PATENT RIGHTS,
regardless of whether such LICENSED PATENT RIGHTS shall be dominant or
subordinate to any LICENSED PATENT RIGHTS.
5
-
REPORTS AND RECORDS
5.1. Obligations
related to reports, records and payments relating to NET SALES of LICENSED
PRODUCTS and LICENSED PROCESSES sold by LICENSEE or related to sublicenses
for
the LICENSED PATENT RIGHTS executed by LICENSEE shall be the responsibility
of
LICENSEE, including those LICENSED PRODUCTS and LICENSED PROCESSES covered
by
the Z PATENT RIGHTS, and including sublicenses to the Z PATENT RIGHTS. LICENSEE
agrees and acknowledges that the M.I.T./ZEISS LICENSE requires Xxxx Zeiss,
Inc.
to submit to M.I.T. directly reports, records and payments related to NET SALES
of LICENSED PRODUCTS and LICENSED PROCESSES sold by Xxxx Zeiss, Inc. or related
to sublicenses for the LICENSED PATENT RIGHTS executed by Xxxx Zeiss, Inc.,
including those LICENSED PRODUCTS and LICENSED PROCESSES covered by the CDT
PATENT RIGHTS, and including sublicenses to the CDT PATENT RIGHTS.
5.2. LICENSEE
shall keep full, true and accurate books of account containing all particulars
that may be necessary for the purpose of showing the amounts payable to M.I.T.
hereunder. Said books of account shall be kept at LICENSEE’s principal place of
business or the principal place of business of the appropriate division of
LICENSEE to which this Agreement relates. Said books and the supporting data
shall be open at all reasonable times for five (5) years following the end
of
the calendar year to which they pertain, to the inspection of M.I.T. or to
its
agents reasonably acceptable to LICENSEE for the purpose of verifying LICENSEE’s
royalty statement or compliance in other respects with this Agreement. Should
such inspection lead to the discovery of a greater than Ten Percent (10%)
discrepancy in reporting to M.I.T.’s detriment, LICENSEE agrees to pay the hill
reasonable cost of such inspection.
32
5.3. LICENSEE
shall deliver to M.I.T. true and accurate reports, giving such particulars
of
the business conducted by LICENSEE and its sublicensees under this Agreement
as
shall be pertinent to diligence under Article 3 and royalty accounting
hereunder:
a.
|
before
the first commercial sale of a LICENSED PRODUCT or LICENSED PROCESS,
annually, on January 31 of each year;
and
|
b.
|
after
the first commercial sale of a LICENSED PRODUCT or LICENSED PROCESS,
quarterly, within sixty (60) days after March 31, June 30, September
30
and December 31, of each year.
|
These
reports shall include at least the following:
a.
|
number
of LICENSED PRODUCTS manufactured, leased and sold by and/or for
LICENSEE
and all sublicensees;
|
b.
|
accounting
for all LICENSED PROCESSES used or sold by and/or for LICENSEE and
all
sublicensees;
|
c.
|
accounting
for NET SALES, noting the deductions applicable as provided in Paragraph
1.14;
|
d.
|
RUNNING
ROYALTIES due under Paragraphs 4.1 (d) and
(e);
|
e.
|
royalties
due on other payments from sublicensees due under paragraph
4.1(f);
|
f.
|
names
and addresses of all sublicensees of LICENSEE;
and
|
g.
|
reference
to the case numbers and patent numbers which cover the actual LICENSED
PRODUCTS sold, so that M.I.T. may appropriately attribute RUNNING
ROYALTIES to particular case numbers or patent
numbers.
|
5.4. With
each
such report submitted, LICENSEE shall pay to M.I.T. the royalties due and
payable under this Agreement. If no royalties shall be due, LICENSEE shall
so
report.
5.5.
On
or before the ninetieth (90th) day following the close of LICENSEE’s fiscal
year, LICENSEE shall provide M.I.T. with LICENSEE’s certified financial
statements for the preceding fiscal year including, at a minimum, a balance
sheet and an income statement.
5.6. The
amounts due under Articles 4 and 6 shall, if overdue, bear interest until
payment at a per annum rate Two Percent (2%) above the prime rate in effect
at
the Chase Manhattan Bank (N.A.) on the due date. The payment of such interest
shall not foreclose M.I.T. from exercising any other rights it may have as
a
consequence of the lateness of any payment.
8
-
PRODUCT LIABILITY
8.1. LICENSEE
shall at all times during the term of this Agreement and thereafter, indemnify,
defend and hold M.I.T., MGH, MEEI, their trustees, directors, officers,
employees and affiliates, harmless against all claims, proceedings, demands
and
liabilities of any kind whatsoever, including legal expenses and reasonable
attorneys’ fees, arising out of the death of or injury to any person or persons
or out of any damage to property, resulting from the production, manufacture,
sale, use, lease, consumption or advertisement of the LICENSED PRODUCT(s) and/or
LICENSED PROCESS(es) or arising from any obligation of LICENSEE
hereunder.
33
8.2. (a) Beginning
at such time as any LICENSED PRODUCT and/or LICENSED PROCESS is being
commercially distributed or sold (other than for the purpose of research and
development and obtaining regulatory approvals) by LICENSEE, its sublicensees
or
agents, LICENSEE shall, at its sole cost and expense, procure and maintain
commercial general liability insurance in amounts not less than Two Million
Dollars ($2,000,000) per incident and Three Million Dollars ($3,000,000) annual
aggregate and naming M.I.T., MGH, and the MEEI as additional insured. Such
commercial general liability insurance shall provide (i) product liability
coverage and (ii) broad form contractual liability coverage for LICENSEE’s
indemnification under paragraph 8.1 of this agreement. If LICENSEE elects to
self-insure all or part of the limits described (including deductibles or
retention’s which are in excess of Two Hundred Fifty Thousand Dollars ($250,000)
annual aggregate) such self-insurance program must be acceptable to M.I.T,
MGH,
and MEEI, and the Risk Management Foundation. The minimum amounts of insurance
coverage required under this paragraph 8.2 shall not be construed to create
a
limit of LICENSEE’s liability with respect to its indemnification under
paragraph 8.1 of their Agreement.
(b) LICENSEE
shall provide M.I.T. with written evidence of such insurance upon request of
M.I.T. LICENSEE shall provide M.I.T. with written notice at least fifteen (15)
days prior to cancellation, non-renewal or material change in such insurance;
if
LICENSEE does not obtain replacement insurance providing comparable coverage
prior to the expiration of such fifteen (15) day period, M.I.T. shall have
the
right to terminate this Agreement effective at the end of such fifteen (15)
day
period without notice or any additional waiting periods.
(c) LICENSEE
shall maintain such commercial general liability insurance beyond the expiration
or termination of this Agreement during (i) the period that any LICENSED PRODUCT
and/or LICENSED PROCESS is being commercially distributed or sold (other than
for the purpose of research and development and obtaining regulatory approvals)
by LICENSEE or by sublicensee or agent of LICENSEE and (ii) a reasonable period
after the period referred to in (c) (i) above which in no event shall be less
than fifteen (15) years.
(d)
|
This
paragraph 8.2 shall survive expiration of termination of this
Agreement.
|
8.3. EXCEPT
AS
OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, M.I.T., MGH, or MEEI, THEIR
TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES MAKE NO REPRESENTATIONS
AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING
BUT
NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
VALIDITY OF LICENSED PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE ABSENCE
OF
LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS AGREEMENT
SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY M.I.T., MGH,
or
MEEI, THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL
NOT
INFRINGE THE LICENSED PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL
M.I.T., MGH, or MEEI, THEIR TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND
AFFILIATES BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND,
INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS
OF
WHETHER M.I.T., MGH, or MEEI, SHALL BE ADVISED, SHALL HAVE OTHER REASON TO
KNOW,
OR IN FACT SHALL KNOW OF THE POSSIBILITY OF THE FOREGOING.
34
9
-
EXPORT CONTROLS
LICENSEE
acknowledges that it is subject to United States laws and regulations
controlling the export of technical data, computer software, laboratory
prototypes and other commodities (including the Arms Export Control Act, as
amended and the United States Department of Commerce Export Administration
Regulations). The transfer of such items may require a license from the
cognizant agency of the United States Government and/or written assurances
by
LICENSEE that LICENSEE shall not export data or commodities to certain foreign
countries without prior approval of such agency. M.I.T. neither represents
that
a license shall not be required nor that, if required, it shall be
issued.
10
-
NON-USE OF NAMES
LICENSEE
shall not use the names or trademarks of the Massachusetts Institute of
Technology, M.I.T. Lincoln Laboratory, Massachusetts General Hospital, or the
Massachusetts eye and Ear Infirmary, nor any adaptation thereof, nor the names
of any of their employees, in any advertising, promotional or sales literature
without prior written consent obtained from M.I.T., M.I.T. Lincoln Laboratory,
Massachusetts General Hospital, or the Massachusetts Eye and Ear Infirmary,
or
said employee, in each case, except that LICENSEE may state that it is licensed
by M.I.T., the Massachusetts General Hospital, and the Massachusetts Eye and
Ear
Infirmary under one or more of the patents and/or applications comprising the
LICENSED PATENT RIGHTS.
12
-
DISPUTE RESOLUTION
12.1. Except
for the right of either party to apply to a court of competent jurisdiction
for
a temporary restraining order, a preliminary injunction, or other equitable
relief to preserve the status quo or prevent irreparable harm, any and all
claims, disputes or controversies arising under, out of, or in connection with
the Agreement, including any dispute relating to patent validity or
infringement, which the parties shall be unable to resolve within sixty (60)
days shall be mediated in good faith. The party raising such dispute shall
promptly advise the other party of such claim, dispute or controversy in a
writing which describes in reasonable detail the nature of such dispute. By
not
later than five (5) business days after the recipient has received such notice
of dispute, each party shall have selected for itself a representative who
shall
have the authority to bind such party, and shall additionally have advised
the
other party in writing of the name and title of such representative. By not
later than ten (10) business days after the date of such notice of dispute,
the
party against whom the dispute shall be raised shall select a mediation firm
in
the Boston area and such representatives shall schedule a date with such firm
for a mediation hearing. The parties shall enter into good faith mediation
and
shall share the costs equally. If the representatives of the parties have not
been able to resolve the dispute within fifteen (15) business days after such
mediation hearing, then any and all claims, disputes or controversies
arising under, out of, or in connection with this Agreement, including any
dispute relating to patent validity or infringement, shall be resolved by final
and binding arbitration in Boston, Massachusetts by mutually agreed upon
alternative dispute resolution mechanisms, or, if unable to agree upon such
mechanisms, under the rules of the American Arbitration Association, or the
Patent Arbitration Rules if applicable, then obtaining. The arbitrators shall
have no power to add to, subtract from or modify any of the terms or conditions
of this Agreement, nor to award punitive damages. Any award rendered in such
arbitration may be enforced by either party in either the courts of the
Commonwealth of Massachusetts or in the United States District Court for the
District of Massachusetts, to whose jurisdiction for such purposes M.I.T. and
LICENSEE each hereby irrevocably consents and submits.
35
12.2. Notwithstanding
the foregoing, nothing in this Article shall be construed to waive any rights
or
timely performance of any obligations existing under this
Agreement.
13
-
TERMINATION
13.1. If
LICENSEE shall cease to carry on its business, this Agreement shall terminate
upon notice by M.I.T.
13.2. Should
LICENSEE fail to make any payment whatsoever due and payable to M.I.T.
hereunder, M.I.T. shall have the right to terminate this agreement effective
on
thirty (30) days’ notice, unless LICENSEE shall make all such payments to M.I.T.
within said thirty (30) day period. Upon the expiration of the thirty (30)
day
period, if LICENSEE shall not have made all such payments to M.I.T., the rights,
privileges and license granted hereunder shall automatically
terminate.
13.3. Upon
any
material breach or default of this Agreement by LICENSEE (including, but not
limited to, breach or default under Paragraph 3.3), other than those occurrences
set out in Paragraphs 13.1 and 13.2 hereinabove, which shall always take
precedence in that order over any material breach or default referred to in
this
Paragraph 13.3, M.I.T. shall have the right to terminate this Agreement and
the
rights, privileges and license granted hereunder effective on ninety (90) days’
notice to LICENSEE. Such termination shall become automatically effective unless
LICENSEE shall have cured any such material breach or default prior to the
expiration of the ninety (90) day period.
13.4. LICENSEE
shall have the right to terminate this Agreement at any time on six (6) months’
notice to M.I.T., and upon payment of all amounts due M.I.T. through the
effective date of the termination.
13.5. Upon
termination of this Agreement for any reason, nothing herein shall be construed
to release either party from any obligation that matured prior to the effective
date of such termination; and Articles 1, 8, 9, 10, 12, 13.5, 13.6, and 15
shall
survive any such termination. LICENSEE and any sublicensee thereof may, however,
after the effective date of such termination, sell all LICENSED PRODUCTS, and
complete LICENSED PRODUCTS in the process of manufacture at the time of such
termination and sell the same, provided that LICENSEE shall make the payments
to
M.I.T. as required by Article 4 of this Agreement and shall submit the reports
required by Article 5 hereof.
36
13.6. Upon
termination of this Agreement for any reason, any sublicensee not then in
default shall have the right to seek a license from M.I.T. M.I.T. agrees to
negotiate such licenses in good faith under reasonable terms and
conditions.
13.7. Upon
LICENSEE’S request during the term of this Agreement, M.I.T. agrees to provide,
on a timely basis, a letter to an existing or potential sublicensee specifically
named by LICENSEE stating that, in the event of termination of this Agreement,
M.I.T. will grant a license to sublicensee under terms and conditions to be
no
less favorable as a whole than those granted to sublicensee by LICENSEE,
provided that sublicensee is not in default of its sublicense agreement with
LICENSEE at the time such license is to be granted by M.I.T. and provided that
M.I.T. shall not assume any obligation of LICENSEE to sublicensee pursuant
to
any representation, warranty or indemnification provision. LICENSEE’s right to
request and sublicensee’s right to acquire such letter are specifically
conditioned on M.I.T.’s review of the final, executed sublicense agreement
between sublicensee and LICENSEE and on M.I.T.’s reasonable conclusion, at its
sole discretion, that M.I.T.’s grant of such a sublicense is reasonable and in
the best interests of the commercialization of the Patent Rights.
15
-
MISCELLANEOUS PROVISIONS
15.1. All
disputes arising out of or related to this Agreement, or the performance,
enforcement, breach or termination hereof, and any remedies relating thereto,
shall be construed, governed, interpreted and applied in accordance with the
laws of the Commonwealth of Massachusetts, U.S.A., except that questions
affecting the construction and effect of any patent shall be determined by
the
law of the country in which the patent shall have been granted.
15.2. The
parties hereto acknowledge that this Agreement and the Agreements described
in
paragraph 4.1 (b) sets forth the entire Agreement and understanding of the
parties hereto as to the subject matter hereof, and shall not be subject to
any
change or modification except by the execution of a written instrument signed
by
the parties.
15.3. The
provisions of this Agreement are severable, and in the event that any provisions
of this Agreement shall be determined to be invalid or unenforceable under
any
controlling body of the law, such invalidity or unenforceability shall not
in
any way affect the validity or enforceability of the remaining provisions
hereof
15.4. LICENSEE
agrees to xxxx the LICENSED PRODUCTS sold in the United States with all
applicable United States patent numbers. All LICENSED PRODUCTS shipped to or
sold in other countries shall be marked in such a manner as to conform with
the
patent laws and practice of the country of manufacture or sale.
15.5. The
failure of either party to assert a right hereunder or to insist upon compliance
with any term or condition of this Agreement shall not constitute a waiver
of
that right or excuse a similar subsequent failure to perform any such term
or
condition by the other party.
15.6. Underlined
headings are for convenience only, and do not constitute terms of this
License.
37
Appendix
D
Thursday
August 8, 9:20 am Eastern Time
Company
Press Release
LightLab
Imaging and Xxxxxx Laser sign Optical Coherence Tomography Licensing
Agreement
Westford,
Mass., Aug. 8, 2001 - LightLab Imaging, LLC and Xxxxxx Laser, Inc., today
announced a licensing agreement related to the use of Optical Coherence
Tomography (OCT) in the field of dentistry. Under the terms of the agreement,
Xxxxxx Laser gains license to LightLab Imaging’s intellectual property portfolio
related to Optical Coherence Tomography in the field of dentistry for the life
of the agreement. In exchange for these licenses, LightLab Imaging will receive
compensation of an undisclosed amount.
“We
are
pleased to have reached this agreement with LightLab Imaging,” said Xxxxxxx
Xxxxx, CEO of Xxxxxx Laser. “This agreement provides Xxxxxx Laser with access to
a technology that will be an important part of the dental office of the future.
Optical Coherence Tomography will provide dentists with an unprecedented level
of image resolution to assist in the evaluation of periodontal disease, dental
restorations and in the detection of caries. OCT is one example of the
innovative technologies Xxxxxx Laser is committed to bringing to dentists world
wide.”
Xxxx
Xxxxxx, Ph.D.,
President and CEO of LightLab Imaging, stated, “This agreement both acknowledges
the strength of our enabling intellectual property and expands the breadth
of
clinical applications for Optical Coherence Tomography. Dentistry represents
the
third significant application area into which LightLab proprietary technology
has been licensed, moving us one step closer to our larger vision of
establishing OCT as the sixth major imaging modality.”
LightLab
Imaging’s technology is based on Optical Coherence Tomography (OCT), a novel
imaging modality utilizing broad bandwidth light sources and advanced fiber
optics to achieve image resolution in the range of 10-12 micron. Optical
Coherence Tomography and LightLab Imaging’s fundamental technology was developed
from research at the Massachusetts Institute of Technology and Massachusetts
General Hospital.
LightLab
Imaging, LLC, based in Westford, Mass., is a privately held firm, specializing
in the development and commercialization of Optical Coherence Tomography for
medical and biological applications. For additional information regarding
LightLab Imaging, please refer to the company’s web site at xxxx://xxx.xxxxxxxxxxxxxxx.xxx.
38
An
innovator in the dental industry, Xxxxxx Laser is a pre-IPO stage medical device
company developing the first laser light based early detection imaging system
for teeth and gums to take advantage of the new non-invasive treatment
modalities including laser treatment. For more information on Xxxxxx Laser’s
products and service access the company’s website at xxxx://xxx.xxxxxxxxxxx.xxx.
39