Exhibit 10.2
NON EXCLUSIVE LICENSE AGREEMENT
This Agreement (this "Agreement") is made as of the 15th day of November, 2004
by and between GENERAL FINANCE AND DEVELOPMENT, INC., a Minnesota corporation
(hereinafter called "Licensor") and VITAL HEALTH TECHNOLOGIES, INC. (a.k.a.
Caribbean American Health Resorts, Inc.), a Minnesota corporation. Vital Health
Technologies, Inc. and its subsidiaries are collectively referred to hereinafter
as "Licensee".
BACKGROUND
WHEREAS, there exists a technology called Variance Cardiography for the
diagnosis of heart disease, involving computer processing and pattern
recognition of electrocardiograms (the "Technology");
WHEREAS, the Licensee owned the Technology and, pursuant to that
certain Settlement Agreement dated as of November 15, 2004 by and between the
Licensor, Vital Health Technologies and Aurora Capital Holdings, L.L.C. (the
"Settlement Agreement"), the Licensee agreed to transfer the Technology to the
Licensor in accordance with the terms and conditions of the Settlement
Agreement;
WHEREAS, pursuant to the terms of the Settlement Agreement, the
Licensor has agreed to execute this License Agreement, granting the Licensee a
non-exclusive license to the Technology; and
WHEREAS, the Licensor desires to license the Technology to Licensee for
the continued development and commercialization of Technology on the terms and
conditions set forth.
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereby agree as follows:
1. License. Licensor hereby grants to Licensee a non-exclusive, irrevocable,
worldwide, unlimited license to make, have made, modify, copy, distribute,
publicly perform, publicly display, electronically transmit, reverse engineer,
make derivatives of, develop, use, market and sell the Technology, with the
right to sublicense third parties to do any of the foregoing. Licensor reserves
the right to enter into non-exclusive license agreements with other parties.
2. Technology Transfer. Within 10 days of a written request by Licensee, all
available proprietary information regarding the Technology will be made
available to Licensee including, but not limited to: one (1) prototype system,
software codes, copies of schematics and clinical studies, contacts for
development purposes including physicians, engineers, manufacturers, suppliers
and consultants. In the event Licensee requires a prototype system to be shipped
to a designated location, Licensee shall arrange for and pay the shipping cost.
Licensor will arrange for a one (1) day orientation and training session on the
operation of the prototype system (limited to the United States) without charge
to the Licensee. Licensor shall pay all costs of storage for the Technology
prior to and throughout the term of this Agreement; provided, however, that the
Licensee shall pay any costs of storage incurred for the storage of the
Technology outside of the state of Minnesota if the Licensee requests the
Licensor to ship such Technology under this Section 2.
3. Improvements. Any improvements, extensions, updates, derivatives, variations
and versions of and to the Technology developed after the date hereof by
Licensor shall be included in the Technology. Any improvements, extensions,
updates, derivatives, variations and versions of and to the Technology made by
Licensee after the date hereof shall be the exclusive property of Licensee and
Licensee shall have no obligation to share any such improvements developed by it
with Licensor.
4. Licensor's Representations and Warranties. Licensor represents and warrants
as follows:
a. Licensor has the full power and authority to execute, deliver,
and perform this Agreement and has taken all steps and shall do all things
appropriate and necessary to consummate these transactions described herein.
b. Licensor is the sole and exclusive owner of the Technology and has the right
to license the Technology as described in this Agreement without the consent of
any other person. The Technology licensed hereby is free and clear of all
claims, security interests, encumbrances and liens of any kind. Licensor
warrants that it owns the entire right, title and interest in and to the
Technology and that no prior sale, license, assignment or transfer thereof has
been granted.
c. There are no pending or threatened claims, actions, suits, arbitrations,
administrative or governmental proceedings or investigations, or infringement,
unfair competition or trade restrictions that will or are likely to affect the
terms of this Agreement, nor has Licensor received any notice or communication
of any impending action that could reasonably result in any of the foregoing.
5. Royalty Payments. It is understood and agreed that the license granted
hereunder includes the right to market and sell the Technology. During the term
of this Agreement, Licensor shall be entitled to the sums herein provided from
Licensee as royalty payments: Five percent (5%) of gross revenue actually
received by the Licensee upon the marketing and sale of the Technology, to be
paid to the Licensor on a quarterly basis, 60 days following the end of each
calendar quarter. These payments will start in the calendar quarter in which
Licensee first receives revenue in respect of the Technology.
6. Accounting. Licensee shall make and keep at its usual place of business true,
complete and contemporary entries of all particulars relating to revenues
received by Licensee in respect of the Technology. Upon request by Licensor,
Licensor shall be permitted, at its own expense and not more than once each
calendar year, to cause an independent third party to review the books and
records of Licensee to ensure that it has received all payments owed to the
Licensor under Section 5 of this Agreement. The accountants shall only report to
the Licensor the proper amount of payment due to the Licensor in each accounting
period and a copy of their report shall be given to Licensee.
7. Licensee's Right of First Refusal. If, during the term of this Agreement,
Licensor intends to assign or transfer all or any part of the Technology,
Licensor shall first give notice thereof to Licensee, whereupon Licensee shall
have thirty (30) days after the receipt of such notice to elect to purchase all
right, title and interest in and to the Technology at the price to be paid to
Licensor by the third party assignee.
8. Right to assign. Neither party may assign this Agreement without the prior
express written consent of the other party.
9. Termination. This Agreement shall continue into perpetuity until terminated
as provided below: a. If Licensee shall fail to make payment to Licensor of any
undisputed amount, when due and in the manner stated, then Licensor may
terminate this Agreement if the failure to pay remains uncured for 30 days after
written notice was given by the Licensor of such failure to pay;
b. If Licensor breaches any provision of this Agreement, then Licensee may
terminate this Agreement if the default remains uncured for 30 days after
written notice was given by the Licensee of such breach; and
c. If Licensee exercises the Right of First Refusal for all of the Technology as
provided in Section 7 of this Agreement, this Agreement will terminate
immediately upon the closing of the purchase of the Technology.
10. Liability and Indemnification. Licensee agrees to indemnify and hold
harmless the Licensor and its directors, officers and employees, from any and
all claims, demands and actions whatsoever which may be brought against
Licensor, its directors, officers, and employees, by virtue of anything arising
from the development, marketing and application of the Technology by Licensee.
Licensor agrees to indemnify and hold harmless the Licensee and its directors,
officers and employees from any and all claims, demands and actions whatsoever
(including attorneys' fees) which may be brought against Licensee, its
directors, officers and employees, relating to the Technology or to a breach by
Licensor of this Agreement, including but not limited to claims or allegations
by third parties that the Technology infringes a third party's proprietary
rights.
11. Licensor Bankruptcy. All rights and licenses granted under or
pursuant to this Agreement by Licensor to Licensee are, and shall otherwise be
deemed to be, for purposes of Section 365(n) of the United States Bankruptcy
Code, licenses of rights to "intellectual property" as defined under Section
101(56) of the United States Bankruptcy Code. The parties agree that Licensee,
as a licensee of such rights under this Agreement, shall retain and may fully
exercise all of its rights and elections under the United States Bankruptcy
Code. The parties further agree that, in the event of the commencement of a
bankruptcy proceeding by or against Licensor under the United States Bankruptcy
Code, Licensee shall be entitled to a complete duplicate of (or complete access
to, as appropriate) any such intellectual property and embodiments of such
intellectual property, and the same, if not already in its possession, shall be
promptly delivered to Licensee upon written request therefor by Licensee (a)
upon any such commencement of a bankruptcy proceeding, unless Licensor elects to
continue to perform all of its obligations under this Agreement, or (b) if not
delivered under this Agreement, or if not delivered under (a) above, upon the
rejection of this Agreement by or on behalf of Licensor.
12. Relationship. Nothing in this Agreement shall create a partnership, joint
venture or establish the relationship of principal and agent or any other
relationship of similar nature between the parties. There are no third party
beneficiaries to this Agreement.
13. No Obligation to Use. Nothing herein shall be construed as an obligation of
the Licensee to use the Technology or any part thereof, in any manner or for any
purpose whatsoever.
14. Notices. All notices, requests, demands and other communications hereunder
shall be in writing, and shall be delivered by hand or sent by mail, facsimile
transmission or overnight courier. Notices sent by mail shall be sent by
certified mail, return receipt requested and shall be deemed received on the
date of receipt indicated by the receipt verification provided by the U.S.
Postal Service. Notices delivered by overnight courier shall be deemed received
on the date of receipt indicated by the verification provided by the courier.
Notices sent by facsimile transmission shall be deemed received the day on which
sent, and shall be conclusively presumed to have been received in the event that
the sender's copy of the facsimile transmission contains the "answer back" of
the other party's facsimile transmission. Notices shall be effective upon
receipt. Notice shall be given, mailed or sent to the parties at the following
addresses, or such other addresses as are provided by the parties:
If to the Licensee:
CEO
Caribbean American Health Resorts, Inc.
0000 Xxxxxxxx Xxxx., Xxxxx 000
Xxxxxxx Xxxxx, XX 00000
Fax: (000) 000-0000
With a copy to:
Dennis P. R. Codon, Esq.
Robins, Kaplan, Xxxxxx & Xxxxxx L.L.P.
0000 Xxxxxxx Xxxx Xxxx, Xxxxx 0000
Xxx Xxxxxxx, XX 00000
Fax: (000) 000-0000
If to the Licensor:
CEO
General Finance and Development, Inc.
000 Xxxxxxx Xxxxxx Xx., Xxxxx 000
Xx. Xxxx, XX 00000 Fax: ( 000 ) 000-0000 (Call first)
15. Entire Agreement; Amendment; Waiver. This Agreement, together with the
Settlement Agreement, constitutes the entire agreement between the parties
hereto pertaining to the subject matter hereof and supersedes all prior
agreements, understandings, negotiations and discussions, whether oral or
written, of the parties hereto, pertaining to such subject matter. There are no
warranties, representations or agreements, express or implied, between the
parties in connection with the subject matter hereof except as may be
specifically set forth herein. No amendment, supplement, modification or waiver
of this Agreement shall be binding unless it is set forth in a written document
signed by the Licensor and the Licensee. No waiver of any of the provisions of
this Agreement shall be deemed or shall constitute a waiver of any other
provisions (whether or not similar) nor shall such waiver constitute a
continuing waiver unless otherwise expressly provided in a written document
signed by the parties hereto.
16. Severability. In the event that any provision of this Agreement is held
invalid by the final judgment of any court of competent jurisdiction, the
remaining provisions shall remain in full force and effect as if such invalid
provision had not been included herein.
17. Binding Effect. Except as otherwise provided herein, this Agreement shall
inure to the benefit of and shall be binding upon only the parties, their
respective successors and their permitted transferees and assigns.
18. Construction. This Agreement has been entered into after negotiation and
review of its terms and conditions by parties under no compulsion to execute and
deliver a disadvantageous agreement. No ambiguity or omission in this Agreement
shall be construed or resolved against either Licensor or Licensee on the ground
that this Agreement or any of its provisions were drafted or proposed by
Licensor or Licensee.
19. Survival. The provisions of Sections 10 and 11 shall survive the termination
of this Agreement and remain in full force and effect thereafter.
20. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Minnesota, without giving effect to the
rules or principles of any jurisdiction or sovereign county with respect to
conflict of laws.
IN WITNESS WHEREOF the parties hereto have executed this License Agreement
effective as of the date above:
Vital Health Technologies, Inc.
By: /s/ Xxxxxx Xxxxxx
Xxxxxx Xxxxxx, CEO
General Finance and Development, Inc.
By: /s/ Xxxxxxx Xxxxxx
Xxxxxxx Xxxxxx, CEO
