EXHIBIT 10.14
TECHNOLOGY LICENSE AGREEMENT
This TECHNOLOGY LICENSE AGREEMENT (the "Agreement") is made and entered
into as of September 29, 1995, by and between Poly U/A Systems, Inc., a Delaware
corporation ("PSI"), and International Remote Imaging Systems, Inc., a Delaware
corporation ("IRIS"), with reference to the following facts:
A. Simultaneously with entering into this Agreement, IRIS and PSI have
entered into the Development Agreement.
B. IRIS is the owner or licensee of rights in certain technology relating
to the Proposed Products.
C. IRIS is willing to grant to PSI, and PSI desires to acquire from IRIS,
an exclusive, worldwide license to such technology for the purpose of
developing, manufacturing and marketing the Proposed Products.
D. Pursuant to the Development Agreement, PSI has engaged IRIS to employ
the technology licensed hereunder in conducting research and development for and
on behalf of PSI.
E. During the course of such research and development, IRIS may develop
new technology. PSI is willing to grant to IRIS an exclusive, worldwide license
to use such new technology for purposes other than developing, manufacturing or
marketing the Proposed Products.
NOW, THEREFORE, based upon the above premises and in consideration of the
mutual covenants and agreements contained herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged,
parties hereby agree as follows (capitalized terms not defined herein shall have
the meanings set forth in Schedule A attached hereto):
1. CROSS LICENSES.
1.1 GRANT OF LICENSE TO PSI.
1.1.1 GRANT OF LICENSE TO THE IRIS TECHNOLOGY. Subject to
the other provisions of this Section 1.1, IRIS hereby grants to PSI an exclusive
(as against IRIS and all other Persons), worldwide, royalty-free right and
license in perpetuity to use the IRIS Technology solely for purposes of
developing, manufacturing and marketing the Proposed Products. IRIS shall
retain the exclusive (as against PSI) right to use, and sublicense others to
use, the IRIS Technology for all purposes other than developing, manufacturing
or marketing the Proposed Products.
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1.1.2 TRANSFERS OF THE IRIS TECHNOLOGY. Until the Option
Expiration Date, PSI shall not have the right to sublicense, encumber, sell,
assign or otherwise transfer any rights to the IRIS Technology to any Person
other than IRIS or its Affiliates pursuant to the Development Agreement. On and
after the Option Expiration Date, PSI shall have the right to sublicense,
encumber or otherwise transfer any rights to the IRIS Technology licensed to it
hereunder to any Person that agrees in writing to be bound by the terms and
conditions of this Agreement and who PSI reasonably believes will adhere to
those terms and conditions. PSI shall provide IRIS with notice of any
sublicense, encumbrance or other transfer by PSI of any rights to the IRIS
Technology licensed to it hereunder (along with a copy of the relevant
instrument of transfer) at least thirty (30) days prior to the effective date of
such sublicense, encumbrance or other transfer. Any attempted transfer of such
rights in violation of this Section shall be null and void.
1.1.3 THIRD-PARTY LICENSES. With respect to that portion of
the IRIS Technology held at any time by IRIS pursuant to agreements with Persons
other than PSI (for purposes of this Section 1.1.3, "Third-Party Licenses"), the
license granted to PSI under Section 1.1.1 shall be limited to the rights which
IRIS has a right to grant under such Third-Party Licenses and shall be subject
to any obligations, including royalty obligations, assumed by IRIS under such
Third-Party Licenses. PSI agrees to indemnify and hold IRIS harmless against
any Loss caused by the failure of PSI to pay any royalties due under any Third-
Party License as a result of the activities of PSI. During the term of the
Development Agreement, IRIS will use commercially reasonable efforts to obtain
the right to grant sublicenses to PSI under any new Third-Party Licenses on
terms reasonably acceptable to PSI at the sole cost and expense of PSI. PSI
shall not be obligated to accept any grant of rights or assume any obligations
under any new Third-Party Licenses without its consent. IRIS shall notify PSI
of any new Third-Party License and deliver a copy thereof to PSI within fifteen
(15) days of its effective date. PSI shall not take any action, or fail to take
any action within its control, that would constitute or give rise to a breach or
other violation by IRIS of any Third-Party License. PSI acknowledges and
accepts the limitations and royalty obligation under the Technology License
Contract between the Mayo Foundation for Medical Education and Research and IRIS
effective August 1, 1992, as subsequently amended.
1.1.4 TOA RESTRUCTURING AGREEMENTS. The license granted to
PSI under Section 1.1.1 shall also be limited by, and subject to, any
conflicting rights which IRIS may have granted to TOA under the TOA
Restructuring Agreements.
1.2 GRANT OF LICENSES TO IRIS.
1.2.1 GRANT OF LICENSE TO THE PSI TECHNOLOGY. Subject to the
other provisions of this Section 1.2, PSI hereby grants to IRIS an exclusive (as
against PSI and all other Persons), worldwide, royalty-free right and license in
perpetuity to use the PSI Technology for all purposes other than developing,
manufacturing or marketing the Proposed Products. PSI shall retain the
exclusive (as against IRIS) right to use the PSI Technology solely for purposes
of developing, manufacturing and marketing the Proposed Products.
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1.2.2 TRANSFERS OF THE PSI TECHNOLOGY. IRIS shall have the
right to sublicense, encumber or otherwise transfer any rights to the PSI
Technology licensed to it hereunder to any Person that agrees in writing to be
bound by the terms and conditions of this Agreement. IRIS shall provide PSI
with notice of any sublicense, encumbrance or other transfer by IRIS of any
rights to the PSI Technology licensed to it hereunder (along with a copy of the
relevant instrument of transfer) at least thirty (30) days prior to the
effective date of such sublicense, encumbrance or other transfer. Any attempted
transfer of rights by IRIS to the PSI Technology in violation of this Section
shall be null and void.
1.2.3 THIRD-PARTY LICENSES. With respect to that portion of
the PSI Technology held at any time by PSI pursuant to agreements with Persons
other than IRIS (for purposes of this Section 1.2.3, "Third-Party Licenses"),
the license granted to IRIS under Section 1.2.1 shall be limited to the rights
which PSI has a right to grant under such Third-Party Licenses and shall be
subject to any obligations, including royalty obligations, assumed by PSI under
such Third-Party Licenses. IRIS agrees to indemnify and hold PSI harmless from
and against any Loss caused by the failure of IRIS to pay any royalties due
under any Third-Party Licenses as a result of the activities of IRIS. During
the term of the Development Agreement, PSI will use commercially reasonable
efforts to obtain the right to grant sublicenses to IRIS under any new Third-
Party Licenses on terms reasonably acceptable to IRIS at the sole cost and
expense of IRIS. IRIS shall not be obligated to accept any grant of rights or
assume any obligations under any new Third-Party Licenses without its consent.
PSI shall notify IRIS of any new Third-Party License and deliver a copy thereof
to IRIS within fifteen (15) days of its effective date. IRIS shall not take any
action, or fail to take any action within its control, that would constitute or
give rise to a breach or other violation by PSI of any Third-Party License.
2. REPRESENTATIONS, WARRANTIES AND COVENANTS.
2.1 REPRESENTATIONS, WARRANTIES AND COVENANTS OF IRIS. IRIS
represents, warrants and covenants to PSI as follows:
2.1.1 IRIS is a corporation duly organized, validly existing
and in good standing under the laws of the state of Delaware with corporate
powers adequate for executing and delivering, and performing its obligations
under, this Agreement;
2.1.2 the execution, delivery and performance of this
Agreement by IRIS have been duly authorized by all necessary corporate action;
2.1.3 this Agreement has been duly executed and delivered by
IRIS and is a legal, valid and binding obligation of IRIS, enforceable against
IRIS in accordance with its terms;
2.1.4 the execution, delivery and performance of this
Agreement by IRIS do not conflict with or contravene any provision of the
charter documents or by-laws of IRIS or, in any material respect, any agreement,
document, instrument, indenture or other obligation of IRIS;
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2.1.5 IRIS shall not enter into any agreement, make any
commitment, take any action or fail to take any action that would contravene any
material provision of, or materially derogate or restrict any of the rights and
licenses granted to PSI under, this Agreement; and
2.1.6 IRIS is not in default (nor has there transpired an
event which with notice or lapse of time or both would become a default) under
any agreement, document, instrument, indenture or other obligation of IRIS
pertaining to the IRIS Technology.
2.2 REPRESENTATIONS, WARRANTIES AND COVENANTS OF PSI. PSI
represents, warrants and covenants to IRIS as follows:
2.2.1 PSI is a corporation duly organized, validly existing
and in good standing under the laws of the state of Delaware with corporate
powers adequate for executing and delivering, and performing its obligations
under, this Agreement;
2.2.2 the execution, delivery and performance of this
Agreement by PSI have been duly authorized by all necessary corporate action;
2.2.3 this Agreement has been duly executed and delivered by
PSI and is a legal, valid and binding obligation of PSI, enforceable against PSI
in accordance with its terms;
2.2.4 the execution, delivery and performance of this
Agreement by PSI do not conflict with or contravene any provision of the charter
documents or by-laws of PSI or, in any material respect, any agreement,
document, instrument, indenture or other obligation of PSI; and
2.2.5 PSI shall not enter into any agreement, make any
commitment, take any action or fail to take any action that would contravene any
material provisions of, or materially derogate or restrict any of the rights and
licenses granted to IRIS under, this Agreement.
3. DISCLOSURE OF INFORMATION AND TECHNICAL ASSISTANCE.
3.1 DISCLOSURE OF INFORMATION. IRIS and PSI shall disclose to each
other, as reasonably requested, all of the technology licensed hereunder,
including documents, drawings, specifications, processes, formulas, protocols,
devices, software, equipment and other tangible manifestations thereof,
reasonably necessary to enable the other party to make use thereof. Nothing
contained herein shall be construed to require either party to deliver any
information received from any non-Affiliate third-party under a confidentiality
agreement, except on such terms and conditions as are permitted under such
confidentiality agreement.
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3.2 TECHNICAL ASSISTANCE. IRIS and PSI shall make available to each
other, at standard rates and terms then in effect, reasonable services of
technical personnel (consistent with their other obligations) to instruct and
assist the other in utilizing the technology licensed hereunder.
4. CONFIDENTIALITY.
4.1 CONFIDENTIALITY OBLIGATIONS. The parties hereby acknowledge and
agree that the IRIS Technology and the PSI Technology contain valuable
confidential information and trade secrets developed or acquired, or which will
be developed or acquired, through the expenditure of significant amounts of time
and money. Accordingly, except as expressly permitted by Section 4.2 or the
Development Agreement, IRIS and PSI shall maintain the confidential nature of,
and not disclose to any third party, any Confidential Information.
4.2 PERMITTED DISCLOSURES. The obligations of confidentiality
contained in this Agreement shall not apply to the disclosure of any
Confidential Information if, and to the extent:
4.2.1 reasonably necessary to market products, including,
without limitation, by making disclosures to prospective customers as will
adequately explain the nature and operation of the product;
4.2.2 reasonably necessary to effect sublicenses permitted
under this Agreement;
4.2.3 independently developed by the receiving party outside
the scope of the Development Agreement;
4.2.4 reasonably necessary to carry out its obligations under
the Development Agreement;
4.2.5 reasonably necessary to secure governmental or
regulatory approvals or clearances; and
4.2.6 the disclosure is required by a judicial order or
decree of governmental law or regulation, provided that the receiving party
promptly notifies the disclosing party of such requirement and reasonable
opportunity is allowed for the disclosing party to obtain a protective order or
otherwise proceed under applicable law to protect its interests.
4.3 EMPLOYEE CONFIDENTIALITY AND ASSIGNMENT OF INVENTIONS. Prior to
allowing an employee access to any Confidential Information, the employing party
shall obtain from the employee an executed agreement regarding confidentiality
and assignment of inventions in a form reasonably satisfactory to the other
party.
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4.4 INJUNCTIONS; PROOF WAIVED. The parties agree that, due to the
unique and proprietary nature of the Confidential Information, the remedies at
law for a breach by either party of its obligations under this Section 4 will be
inadequate and that, in the event of such breach, the other party shall be
entitled to equitable relief (including without limitation injunctive relief and
specific performance) in addition to all other remedies provided under this
Agreement or available at law. PSI acknowledges the secret nature and quality
of the IRIS Technology as legally protectable proprietary information and
intellectual property and agrees to waive proof of such fact in any litigation
or arbitration between the parties.
5. DISCLAIMER OF WARRANTY; LIMITATIONS OF LIABILITY.
5.1 DISCLAIMER OF WARRANTY. Except as provided in Section 2, the
parties hereto disclaim any and all representations and warranties, express or
implied, concerning the IRIS Technology or the PSI Technology, including without
limitation (i) whether such technology, to the extent not already developed,
will be developed, (ii) the performance, utility, reliability, suitability for
any particular purpose or accuracy of such technology, (iii) whether the use of
the technology licensed hereunder will infringe any patent or other proprietary
rights of any third party, and (iv) whether any of the technology is or will be
entitled to protection under patent, copyright or other proprietary laws.
5.2 LIMITATIONS ON LIABILITY. Neither party to this Agreement shall
be entitled to recover from the other any incidental, consequential, special or
punitive damages for any breach of this Agreement.
6. PATENTS.
6.1 PATENT APPLICATIONS. IRIS may prepare, prosecute and/or maintain
patents with respect to any of the IRIS or PSI Technology. All patents relating
to the PSI Technology shall be assigned to PSI, subject to the rights of IRIS
under Section 1.2 of this Agreement, in exchange for payment of any costs
thereof. In the event that IRIS considers but elects not to prepare, prosecute
or maintain specific patents with respect to the IRIS or PSI Technology, IRIS
shall promptly notify PSI of such decision, and PSI shall have the right to
prepare, prosecute and/or maintain any such patent at its sole expense. Each
party agrees to cause each of its employees and agents to take all actions and
to execute, acknowledge and deliver all instruments or agreements reasonably
requested by the other party and necessary for the perfection, maintenance,
enforcement or defense of that party's rights as set forth in this Section 6.1.
6.2 ENFORCEMENT OF PATENT RIGHTS. If IRIS or PSI has actual notice
of infringement by any Person of any patent or patent application relating to
the IRIS Technology or the PSI Technology, the respective officers of IRIS and
PSI shall confer to determine in good faith an appropriate course of action to
enforce such patent rights or otherwise xxxxx the infringement thereof. If IRIS
determines that enforcement of the patent rights is appropriate, IRIS shall have
the right, but not the obligation, at its own expense, to take appropriate
action to enforce such patent rights; PROVIDED, HOWEVER, that, if IRIS elects to
enforce such patent rights, PSI shall have the right to participate by agreeing
to bear a
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percentage of the costs of such enforcement in such amount as the parties shall
reasonably determine. All amounts recovered in any action to enforce patent
rights undertaken by IRIS and PSI, whether by judgment or settlement, shall be
retained by IRIS and PSI pro rata according to the respective percentages of
expenses borne by them in enforcing such patent rights. If, within six (6)
months after notice of infringement of the IRIS Technology or the PSI
Technology, IRIS has not commenced action to enforce such patent rights or
thereafter ceases to diligently pursue such action, PSI shall have the right, at
its expense, to take appropriate action to enforce such patent rights as its
sole remedy hereunder. All amounts received in any action to enforce patent
rights undertaken solely by PSI at its expense, whether by judgment or
settlement, shall be retained by PSI. IRIS and PSI shall fully cooperate with
each other in the planning and execution of any action to enforce patent rights
relating to the IRIS Technology or the PSI Technology. Neither IRIS nor PSI
shall enter into any settlement that includes the grant of a license under,
agreement not to enforce, or any statement prejudicial to the validity or
enforceability of any patent rights relating to the IRIS Technology or the PSI
Technology without the consent of the other, which consent shall not be
unreasonably withheld.
7. INDEMNIFICATION.
7.1 INDEMNIFICATION OF PSI. Subject to Section 5.2, IRIS shall
indemnify and hold PSI harmless from and against any Loss including, without
limitation, any Loss based upon negligence, warranty, strict liability,
violation of government regulation or infringement of patent or other
proprietary rights, arising out of (a) any use of the IRIS Technology or the PSI
Technology by IRIS or any Affiliate, agent or sublicensee of IRIS (other than
PSI) for purposes other than Research and Development or (b) any breach of this
Agreement by IRIS.
7.2 INDEMNIFICATION OF IRIS. Subject to Section 5.2, PSI shall
indemnify and hold IRIS harmless from and against any Loss including, without
limitation, any Loss based upon negligence, warranty, strict liability,
violation of government regulation or infringement of patent or other
proprietary rights, arising out of (a) any use of the IRIS Technology or the PSI
Technology by PSI or any Affiliate, agent or sublicensee of PSI (other than IRIS
for purposes other than Research and Development) or (b) any breach of this
Agreement by PSI.
7.3 INDEMNIFICATION PROCEDURES. Upon the Indemnified Party becoming
aware of a fact, condition or event for which a claim for Losses in respect
thereof is to be made against the Indemnifying Party under Sections 7.1 or 7.2,
the Indemnified Party will with reasonable promptness notify the Indemnifying
Party in writing of such fact, condition or event. The Indemnifying Party may
undertake full responsibility for the defense or prosecution in connection with
any claim brought by any third party and may contest or settle it on such terms
as the Indemnifying Party may choose; PROVIDED THAT the Indemnifying Party will
not have the right, without the Indemnified Party's written consent, to settle
any such claim if such settlement (i) arises from or is part of any criminal
actions, suit or proceeding, (ii) contains a stipulation to, confession of
judgment with respect to, or admission or acknowledgment of, any liability or
wrongdoing on the part of the Indemnified Party, or (iii)
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provides for injunctive relief, or other relief or finding other than money
damages, which is binding on the Indemnified Party. Such defense or prosecution
will be conducted by reputable attorneys retained by the Indemnifying Party at
the Indemnifying Party's cost and expense, but the Indemnified Party will have
the right to participate in such proceedings and to be separately represented by
attorneys of its own choosing. The Indemnified Party will be responsible for
the costs of such separate representation.
7.4 COOPERATION. The Indemnified Party and the Indemnifying Party
shall cooperate in determining the validity of any third-party claim for any
Loss for which a claim of indemnification may be made hereunder. Each party
shall also use all reasonable efforts to minimize all Losses under this
Agreement.
8. MISCELLANEOUS.
8.1 COMPLETE AGREEMENT; MODIFICATIONS. This Agreement and any
documents referred to herein or executed contemporaneously herewith constitute
the parties' entire agreement with respect to the subject matter hereof and
supersede all agreements, representations, warranties, statements, promises and
understandings, whether oral or written, with respect to the subject matter
hereof. This Agreement may not be amended, altered or modified except by a
writing signed by the parties.
8.2 WAIVERS STRICTLY CONSTRUED. With regard to any power, remedy or
right provided herein or otherwise available to any party hereunder (a) no
waiver or extension of time shall be effective unless expressly contained in a
writing signed by the waiving party; and (b) no alteration, modification or
impairment shall be implied by reason of any previous waiver, extension of time,
delay or omission in exercise, or other indulgence.
8.3 FORCE MAJEURE. Neither party shall be responsible for delays or
failure to perform under this Agreement due to causes beyond the reasonable
control and without fault or negligence of such party.
8.4 NOTICES. Unless otherwise specifically permitted by this
Agreement, all notices under this Agreement shall be in writing and shall be
delivered by personal service, telegram, telex, facsimile or certified mail (or,
if certified mail is not available, then by first class mail), postage prepaid,
to such address as may be designated from time to time by the relevant party,
and which shall initially be as follows:
(i) If to IRIS:
International Remote Imaging Systems, Inc.
0000 Xxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxx 00000
(000) 000-0000 (facsimile)
Attention: Xxxx X. Xxxxxxxxxxx, President
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(ii) If to PSI:
PSI Systems, Inc.
0000 Xxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxx 00000
(000) 000-0000 (facsimile)
Attention: Xxxx X. Xxxxxxxxxxx, President
Any notice sent by certified mail (or by first class mail if certified mail
is not available) shall be deemed to have been given three (3) days after the
date on which it is mailed. All other notices shall be deemed given when
received. No objection may be made to the manner of delivery of any notice
actually received in writing by an authorized agent of a party.
8.5 ADDITIONAL DOCUMENTS. Each party hereto agrees to execute any
and all further documents and writings and to perform such other actions which
may be or become necessary or expedient to effectuate and carry out this
Agreement.
8.6 SUCCESSORS AND ASSIGNS. Except as provided herein to the
contrary, this Agreement shall be binding upon and inure to the benefit of the
parties, their respective successors and permitted assigns.
8.7 ASSIGNMENTS. IRIS may assign its rights and obligations after
prior written notice thereof to PSI to any Person that agrees in writing to be
bound by the terms and conditions of this Agreement. On and after the Option
Expiration Date, PSI may assign its rights and obligations after prior written
notice thereof to IRIS to any Person that agrees in writing to be bound by the
terms and conditions of this Agreement and who PSI reasonably believes will
adhere to those terms and conditions. Except as provided above or otherwise
expressly permitted under this Agreement, neither party may assign any of its
rights or delegate any of its obligations under this Agreement, in whole or in
part, including without limitation pursuant to a merger or consolidation,
without the prior written consent of the other party, which may be withheld in
the sole discretion of the other party. Any attempt to assign or delegate any
portion of this Agreement in violation of this Section shall be null and void.
8.8 GOVERNING LAW. This Agreement has been negotiated and entered
into in the State of California, concerns only California businesses and all
questions with respect to the Agreement and the rights and liabilities of the
parties shall be governed by the laws of that state, regardless of the choice of
laws provisions of California or any other jurisdiction. Any litigation or
arbitration between the parties shall be conducted in Los Angeles, California.
Except as provided above or otherwise expressly permitted under this Agreement,
neither party may assign any of its rights or delegate any of its obligations
under this Agreement, in whole or in part, including without limitation pursuant
to a merger or consolidation, without the prior written consent of the other
party, which may be withheld in the sole discretion of the other party. Any
attempt to assign or delegate any portion of this Agreement in violation of this
Section shall be null and void.
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8.9 REMEDIES. The parties acknowledge that the remedy at law for any
breach, or threatened breach, of any of the provisions of this Agreement will be
inadequate. Therefore, each party to this Agreement shall be entitled to seek
specific performance as a remedy for any breach of this Agreement. Such remedy
shall not be deemed to be the exclusive remedy of a party hereto for the breach
of this Agreement by the other party hereto or its representatives, but shall be
in addition to all other remedies available at law or in equity to the party
suffering such breach.
8.10 ARBITRATION AS EXCLUSIVE REMEDY. Except for actions seeking
injunctive relief, which may be brought before any court having jurisdiction,
any claim arising out of or relating to (i) this Agreement, including, but not
limited to, its validity, interpretation, enforceability or breach, or (ii) the
relationship between the parties (including its commencement and termination)
whether based on breach of covenant, breach of an implied covenant or
intentional infliction of emotional distress or other theories, which are not
settled by agreement between the parties, shall be settled by arbitration in Los
Angeles, California before a board of three arbitrators, one selected by each
party, and the third by the two persons so selected, all in accordance with the
Commercial Arbitration Rules of the American Arbitration Association ("AAA")
then in effect. The notice of intent to arbitrate shall name one arbitrator,
and the party(ies) receiving the notice shall name the second arbitrator within
15 days or the moving party may select the second arbitrator from a list
supplied by the AAA. In the event that these two arbitrators cannot agree upon
a third arbitrator within 15 days, then the third arbitrator shall be selected
from the list provided by the AAA with the parties striking names in order with
the party striking first to be determined by the flip of a coin. The parties
hereby (i) consent to the in personam jurisdiction of the Superior Court of the
State of California for purposes of confirming any such award and entering
judgment thereon; (ii) agree to use their best efforts to keep all matters
relating to any arbitration hereunder confidential; and (iii) agree that the
arbitrators may not assess any remedy other than the awarding of actual damages
suffered and/or an injunctive order (including temporary, preliminary and
permanent relief) when appropriate. In any arbitration proceedings hereunder,
(a) all testimony of witnesses shall be taken under oath; (b) discovery will be
allowed under the provisions of Section 1283.05 of the California Code of Civil
Procedure, as presently in force, which are incorporated herein; and (c) upon
conclusion of any arbitration, the arbitrators shall render findings of fact and
conclusions of law in a written opinion setting forth the basis and reasons for
any decision reached and deliver such documents to each party to this Agreement
along with a signed copy of the award in accordance with Section 1283.6 of the
California Code of Civil Procedure. Each party agrees that the arbitration
provisions of this Agreement are its exclusive remedy and expressly waives any
right to seek redress in another forum. Each party shall bear the fees of the
arbitrator appointed by it, and the fees of the neutral arbitrators shall be
borne equally by each party during the arbitration, but the fees of all
arbitrators shall be borne by the losing party.
8.11 ATTORNEYS' FEES. Should any litigation or arbitration be
commenced (including any proceedings in a bankruptcy court) between the parties
hereto or their representatives concerning any provision of this Agreement or
the rights and duties of any person or entity hereunder, the party or parties
prevailing in such proceeding shall be
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entitled, in addition to such other relief as may be granted, to the attorneys'
fees and court costs incurred by reason of such litigation.
8.12 SEVERABILITY. The validity, legality or enforceability of the
remainder of this Agreement shall not be affected even if one or more of the
provisions of this Agreement shall be held to be invalid, illegal or
unenforceable in any respect. To the extent permitted by applicable law, the
parties hereby waive any provision of law that would render any provision hereof
prohibited or unenforceable in any respect.
8.13 NO THIRD-PARTY BENEFITS. None of the provisions of this
Agreement shall be for the benefit of, or enforceable by, any third-party
beneficiary.
8.14 HEADINGS. The headings in this Agreement are inserted only as a
matter of convenience, and in no way define, limit, or extend or interpret the
scope of this Agreement or of any particular provision.
8.15 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the date first written above.
INTERNATIONAL REMOTE IMAGING SYSTEMS, INC.
By
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Xxxx X. Xxxxxxxxxxx, Chairman of the Board,
President and Chief Executive Officer
POLY U/A SYSTEMS, INC.
By
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Xxxx X. Xxxxxxxxxxx, President
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SCHEDULE A
GLOSSARY
"ADMINISTRATION AND SERVICES AGREEMENT" shall mean the Administration and
Services Agreement dated as of September 29, 1995 between IRIS and PSI, as
amended, modified or supplemented from time to time.
"AFFILIATE" of a Person shall mean a Person that directly, or indirectly
through one or more intermediaries, controls, is controlled by or is under
common control with such Person. "Control" (and, with correlative meanings, the
terms "controlled by" and "under common control with") shall mean the possession
of the power to direct or cause the direction of the management and policies of
such Person, whether through the ownership of voting stock, by contract or
otherwise. In the case of a corporation "control" shall mean, among other
things, the direct or indirect ownership of more than fifty percent (50%) of its
outstanding voting stock.
"ANNUAL WORKPLAN AND BUDGET" shall mean the reasonably detailed workplans
and budgets for Research and Development to be provided by IRIS to PSI for each
annual period in accordance with Sections 1.1.1 and 1.1.4 of the Development
Agreement.
"AVAILABLE FUNDS" shall have the meaning set forth in Section 2.1 of the
Development Agreement.
"BANKRUPTCY CODE" shall mean the Bankruptcy Reform Act of 1978, as amended,
modified or supplemented from time to time.
"CONFIDENTIAL INFORMATION" shall mean all information disclosed by IRIS to
PSI or by PSI to IRIS pursuant to the Technology License Agreement or the
Development Agreement, except information that (i) was known to the receiving
party prior to its receipt from the disclosing party (except that information
first developed pursuant to the Development Agreement shall not be considered
known by IRIS), (ii) is or becomes part of the public domain through no fault of
the receiving party or (iii) is disclosed to the receiving party on an
unrestricted basis by a third party that is legally free to disclose such
information.
"DEVELOPMENT AGREEMENT" shall mean the Research and Development Agreement
dated as of September 29, 1995 between PSI and IRIS, as amended, modified or
supplemented from time to time.
"FDA" shall mean the United States Food and Drug Administration or any
successor agency or authority, the approval of which is required to market
medical laboratory instruments in the United States.
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"IMPROVEMENTS" shall mean all methods, procedures, processes, techniques,
systems, inventions, apparatus, information, formulas, trade secrets, concepts,
ideas, proprietary rights (including, without limitation, patents), know-how,
data and test results made, conceived, discovered or developed by IRIS
exclusively in the course of conducting Research and Development.
"INDEMNIFIED PARTY" shall mean, with respect to any alleged Loss, the party
seeking indemnity under the terms of this Agreement.
"INDEMNIFYING PARTY" shall mean, with respect to any alleged Loss, the
party from whom indemnity is being sought under the terms of this Agreement.
"IRIS" shall mean International Remote Imaging Systems, Inc., a Delaware
corporation.
"IRIS COMMON STOCK" shall mean the common stock, $0.01 par value per share,
of IRIS or such security that IRIS stockholders receive in connection with any
consolidation, merger, or sale of all or substantially all of the assets of IRIS
or, if such securities were not received, the common stock (or equivalent
thereto) of the Person surviving any consolidation of IRIS with or merger of
IRIS with or into any other Person or any sale, lease or other transfer of all
or substantially all of the assets of IRIS to any other Person (including any
individual, partnership, joint venture, corporation, trust or group thereof).
"IRIS TECHNOLOGY" shall mean all methods, procedures, processes,
techniques, systems, inventions, apparatus, information, formulas, trade
secrets, concepts, ideas, proprietary rights (including, without limitation,
existing and pending patents), know-how, data and test results (excluding the
PSI Technology) which IRIS owns, or to which IRIS has the right to grant
sublicenses, on or prior to the expiration of the Development Agreement.
"LOSS" shall mean any loss, damage, claim, liability or expense, including
without limitation, interest, penalties and reasonable attorneys' fees, net of
any tax adjustments, settlements or other effects which actually result from the
Loss and its payment by the Indemnifying Party.
"MAYO ADVANCED URINE CHEMISTRY SYSTEM" means a Stand Alone wet chemistry
system for urine chemistry.
"OFFERING" shall mean the offering of Units as described in the Offering
Memorandum.
"OFFERING MEMORANDUM" shall mean the Offering Memorandum relating to the
Units dated June 29, 1995, as supplemented by the Supplemental Information to
Offering Memorandum dated Septebmer 25, 1995.
"OFFERING START DATE" shall mean the original date of the Offering
Memorandum.
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"OPTION EXPIRATION DATE" shall mean 121 days after termination of the
Development Agreement.
"PERSON" shall mean any individual, partnership, corporation, firm,
association, unincorporated organization, joint venture, trust or other entity.
"PROPOSED PRODUCTS" shall mean the Sonic Macrometer, the Mayo Advanced
Urine Chemistry System, the Urine Sediment Analyzer, and the Specimen
Accessioning Station.
"PSI" shall mean Poly U/A Systems, Inc., a Delaware corporation.
"PSI COMMON STOCK" shall mean the common stock, $.01 par value per share,
of PSI.
"PSI TECHNOLOGY" shall mean all methods, procedures, processes, techniques,
systems, inventions, apparatus, information, formulas, trade secrets, concepts,
ideas, proprietary rights (including, without limitation, existing and pending
patents), know-how, data and test results (excluding the IRIS Technology) which
PSI owns, or to which PSI has the right to grant sublicenses, on or prior to the
expiration of the Development Agreement, including the Improvements.
"RESEARCH AND DEVELOPMENT" shall have the meaning set forth in Section 1.1
of the Development Agreement.
"RESEARCH AND DEVELOPMENT COSTS" shall mean all direct and indirect costs,
fees and out-of-pocket or other expenses incurred, paid or accrued by IRIS in
connection with performing the Research and Development for PSI under the
Development Agreement, determined in accordance with Section 2.3 thereof, but
excluding in all events any such costs, fees or expenses paid by PSI to IRIS
under the Administration and Services Agreement.
"SONIC MACROMETER" means a Stand Alone instrument designed to automatically
measure all of urine specific gravity, pH and urine color and clarity in a
single instrument.
"SPECIMEN ACCESSIONING STATION" means a Stand Alone system consisting of
collection cups and an automatic pipetting device designed to transfer urine
from collection cups into standard clinical laboratory tubes.
"STAND ALONE" shall mean an instrument which is designed and sold primarily
to conduct the test or combination of tests described in the definition of the
instrument and not bundled with or generally sold or marketed with significant
additional features or incorporated into another instrument.
"TECHNOLOGY LICENSE AGREEMENT" shall mean the Technology License Agreement
dated as of September 29, 1995 between IRIS and PSI, as amended, modified or
supplemented from time to time.
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"TOA" shall mean TOA Medical Electronics Co., Ltd., a Japanese corporation.
"TOA RESTRUCTURING AGREEMENTS" shall mean the following agreements between
TOA and IRIS dated as of July 15, 1988: (i) Restructuring Agreement, (ii)
Amended and Restated Distribution Agreement, (iii) License Agreement and (iv)
Security Agreement and Collateral Assignment.
"UNITS" shall mean the units described in the Offering Memorandum, each
consisting of two thousand shares of PSI Common Stock and a warrant to purchase
four thousand shares of IRIS Common Stock.
"URINE SEDIMENT ANALYZER" means a Stand Alone instrument for automatically
conducting the microscopic portion of a urinalysis only through a slide-based
microscope but will not include a complete urinalysis work station or any other
part of a complete urinalysis.
"WORKPLAN AND BUDGET" shall mean the workplan and budget for Research and
Development to be provided by IRIS to PSI for the duration of the Development
Agreement in accordance with Section 1.1.1 thereof.
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