NON-EXCLUSIVE LICENSE
AGREEMENT
THIS NON-EXCLUSIVE LICENSE AGREEMENT ("AGREEMENT") is made on February 24,
2005, by and between LASERSIGHT INCORPORATED, a Delaware corporation having a
place of business at 0000 Xxxxxxxx Xxxxx, Xxxxxx Xxxx, Xxxxxxx, Xxxxxx Xxxxxx of
America 32792 ("LICENSOR"), and WAVELIGHT LASER TECHNOLOGIE AG, a German
corporation having a place of business at Am Xxxxxxxxxxx 0, 00000 Xxxxxxxx,
Xxxxxxx ("LICENSEE"), to be effective as set forth in the definition of
"Effective Date" under Section 1.00 hereinbelow.
WITNESSETH:
WHEREAS, Licensor holds title to the Lin Scanning Patents (as
hereinafter defined) and the Apple Patents (as hereinafter defined);
WHEREAS, Licensee desires to acquire, and Licensor is willing to grant,
convey, and sell to Licensee the License (as hereinafter defined) pursuant to
the terms and conditions contained herein.
NOW, THEREFORE, in consideration of the following mutual promises and
obligations, the Parties agree as follows.
ARTICLE I
DEFINITIONS
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SECTION 1.00 DEFINITIONS.
-------------------------
The following terms shall have the following meanings for purposes of
this Agreement:
"AGREEMENT" shall mean this Non-Exclusive License Agreement.
"APPLE PATENTS" shall mean U.S. Patents Nos. 6,007,202, 6,193,379 and 6,334,683,
together with all continuations, divisions, continuations-in-part, reissues,
reexaminations, renewals, and extensions and foreign counterparts of such
patents, as identified on ATTACHMENT "A" hereto.
"CONFIDENTIAL INFORMATION" means information provided by one Party ("DISCLOSER")
to the other Party ("RECIPIENT") pursuant to this Agreement and specifically
designated by the Discloser as "confidential" (either in writing at the time of
disclosure to the Recipient or by written confirmation within ten (10) days
after the Discloser discloses such information to the Recipient), relating to
the research, development, products, processes, trade secrets, business plans,
customers, finances, and personnel data related to the business of Discloser.
Confidential Information does not include any information (i) the Recipient knew
before the Discloser provided it; (ii) which has become publicly known through
no wrongful act of the Recipient; (iii) which the Recipient developed
independently, as evidenced by appropriate documentation; or (iv) which the
Recipient becomes aware of from any third Party not bound by non-disclosure
obligations to the Discloser and with the lawful right to disclose such
information to the Recipient. Notwithstanding the foregoing, specific
information will not be deemed to be within the foregoing exceptions merely
because it is contained within more general information otherwise subject to
such exceptions.
"EFFECTIVE DATE" means the date when this Agreement shall become effective,
which shall be the date when Licensor receives a counterpart of this Agreement
duly executed by Licensee and the Initial Payment (as defined 3.00 (a) below),
but no later than March 3, 2005. If Licensor does not receive both the Initial
Payment and a counterpart of this Agreement duly executed by Licensee by March
3, 2005, this Agreement shall automatically become null and void as if the
parties have never entered into this Agreement.
"LICENSED FIELD OF USE" or "LICENSED FIELD" means ophthalmic refractive laser
surgery.
"LICENSED PATENTS" shall mean (i) the Lin Scanning Patents, and (ii) IF, AND
ONLY IF, (a) Licensee exercises its option under Section 2.01 hereinbelow, (b)
Licensor has the legal right, authority and capacity to grant a license to
Licensee as set forth in Section 2.01 hereinbelow, and (c) Licensee pays to
Licensor the full amount of the Apple Patents Fee pursuant to Section 3.01
hereinbelow, the Apple Patents.
"LICENSE" means collectively (i) the Lin Scanning License granted pursuant to
the terms under Section 2.00 hereinbelow; and (ii) IF, AND ONLY IF, (a) Licensee
exercises its option under Section 2.01 hereinbelow, (b) Licensor has the legal
right, authority and capacity to grant a license to Licensee as set forth in
Section 2.01 hereinbelow, and (c) Licensee pays to Licensor the full amount of
the Apple Patents Fee pursuant to Section 3.01 hereinbelow, the Apple License
that may be granted pursuant to the terms under Section 2.01 hereinbelow.
"LIN SCANNING PATENTS" shall mean U.S. Patent No. RE 37,504, the reissue of U.S.
Patent No. 5,520,679 and U.S. Patent No. 6,716,210, together with all
continuations, divisions, continuations-in-parts, reissues, reexaminations,
renewals, and extensions and foreign counterparts of such patents, as identified
on ATTACHMENT "A" hereto.
"NON-LICENSED FIELD OF USE" means all fields of use other than the Licensed
Field of Use.
"PARTY" means either Licensor or Licensee, and "Parties" means both of them.
"PATENTS" means all patentable materials, letters patent and utility models and
applications therefor (and patents which may issue on such applications), in all
jurisdictions.
"PRODUCTS" means the products comprising in whole or in part the Licensed
Patents, manufactured, made, distributed, and/or sold solely by or on behalf of
Licensee only within the Licensed Field, as expressly permitted pursuant to this
Agreement. "Products" shall mean specifically Licensee's Allegretto Wave Excimer
Laser Products, including the Allegretto Wave (200 Hz) as approved for sale by
the U.S. FDA as of the date first set forth above in the preamble, and those
other versions of the Allegretto Wave Excimer Laser Products that have been
publicly introduced by Licensee at international meetings on or before the date
first set forth in the preamble hereof. To the extent permitted by law,
"Products" shall also include other post-Effective Date software versions and
next generation improvements to the Allegretto Wave Excimer Laser Products that
may be derived in the future by Licensee. "Products" shall not include (i) any
excimer laser products that are partially or wholly acquired by Licensee from
third parties (except for parts, components, or subassemblies), (ii) any
products or items not being marketed, promoted, sold or distributed under, or
not having affixed to them, the "Wavelight" tradename, however, Licensee shall
have the right during the Term to sell the Products under any brand name in
which Licensee has a 100% ownership (and in which no other party has any right,
title or interest) in accordance with the provisions contained in this
Agreement, and (iii) any products or items partially or wholly produced, created
or derived for or on behalf of any third party.
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"TERM" means the duration of this Agreement, commencing on the Effective Date
and continuing until the Expiration Date (as defined in Section 5.00 hereof).
"TERRITORY" means worldwide.
ARTICLE II
GRANT OF NON-EXCLUSIVE LICENSE AND OPTION
-----------------------------------------
SECTION 2.00 GRANT OF NON-EXCLUSIVE LICENSE TO LIN SCANNING PATENTS.
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For the consideration set forth herein and subject to the terms and
conditions of this Agreement, Licensor hereby grants to Licensee, commencing on
the Effective Date and during the Term and throughout the Territory:
(a) a non-transferable (except as expressly permitted in Section
2.00 (b) hereinbelow) and non-exclusive license and right
(collectively, the "LIN SCANNING LICENSE") (i) to use and
reproduce on its behalf and for itself only the Lin Scanning
Patents to create, make, have made, use, lease, import,
export, offer to sell, sell, and/or otherwise dispose of the
Products for the Licensed Field of Use; and (ii) to perform on
its behalf and for itself only the methods embodying the Lin
Scanning Patents specifically in connection with the
manufacturing, use or sale of the Products in the Licensed
Field of Use; and
(b) subject specifically to Section 2.02 (c) hereof, a
non-transferable and non-exclusive sublicense ("PERMITTED LIN
SCANNING SUBLICENSE") to all rights granted to Licensee under
Section 2.00 (a) hereinabove to 100% wholly owned subsidiaries
of Licensee upon ten (10) business days' prior written notice
to Licensor (the "LICENSEE'S SUBSIDIARY SUBLICENSEES" or the
"PERMITTED LIN SCANNING SUBLICENSEES").
(c) Subject to other terms and conditions of this Agreement,
Licensee's end users ("LICENSEE'S END USERS") shall be
permitted to use the Products licensed under this Agreement
for their intended purpose and shall be permitted to sell,
offer for sale or lease such licensed Products originally
purchased from Licensee or Licensee's Subsidiary Sublicensees.
(d) No additional license, grant, or working right is hereby
granted or implied by this Agreement.
SECTION 2.01 GRANT OF OPTION TO ACQUIRE LICENSE TO THE APPLE PATENTS.
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(a) For the consideration set forth herein and subject to the
terms and conditions of this Agreement, Licensor hereby agrees
to grant to Licensee an option to acquire, commencing on the
Effective Date and during the Term and within the Territory, a
non-transferable and non-exclusive license in and to the Apple
Patents, as specifically set forth below.
(b) Provided that Licensee has not breached any provision
contained in this Agreement, upon receiving written notice
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from Licensee pursuant to Section 2.01 (d) hereinbelow and
upon full payment to Licensor of the Apple Patents Fee set
forth in Section 3.01 below, subject to the terms of this
Agreement and to the extent of, subject to, and limited to,
Licensor having the ability and right (including, without
limitation, the legal right, authority, and capacity) to grant
such license to Licensee with respect to the Apple Patents,
Licensor pursuant to terms of Section 2.01 (d) below shall,
subject to the terms and conditions of this Agreement, grant
to Licensee, during the remainder of the Term and throughout
the Territory:
(i) a non-transferable and non-exclusive license and right
(the "APPLE LICENSE") (A) to use and reproduce on its behalf
and for itself only the Apple Patents to create, make, have
made, use, lease, import, export, offer to sell, sell, and/or
otherwise dispose of the Products for the Licensed Field of
Use; and (B) to perform on its behalf and for itself only the
methods embodying the Apple Patents specifically in connection
with the manufacturing, use or sale of the Products in the
Licensed Field of Use; and
(ii) subject specifically to Section 2.02 (c) hereof, to grant
a non-transferable and non-exclusive sublicense (the
"PERMITTED APPLE SUBLICENSE", together with the "PERMITTED LIN
SCANNING SUBLICENSE", are collectively referred to as the
"PERMITTED SUBLICENSES") to all rights granted to Licensee
under Section 2.01(b)(i) hereinabove to Licensee's Subsidiary
Sublicensees upon ten (10) business days' prior written notice
to Licensor (the "PERMITTED APPLE SUBLICENSEES", together with
the "PERMITTED LIN SCANNING SUBLICENSEES," are collectively
referred to as the "PERMITTED SUBLICENSEES").
(c) Subject to other terms and conditions of this Agreement,
Licensee's End Users shall be permitted to use the Products
licensed under this Agreement for their intended purpose and
shall be permitted to sell, offer for sale or lease such
licensed Products originally purchased from Licensee or
Licensee's Subsidiary Sublicensees.
(d) Notwithstanding anything stated to the contrary, the Parties
expressly agree that Licensor shall only be required to grant
and convey to Licensee the Apple License or Permitted Apple
Sublicense only if such action by Licensor, the Apple License,
the Permitted Apple Sublicense or anything related to the
Apple License or the Apple Patents, in the opinion of Licensor
and its legal counsel as determined in their sole and absolute
discretion, does not and will not, directly or indirectly
(with or without notice or lapse of time), violate, conflict
with or result in the breach of any term, condition or
provision of, or require the consent of any other person or
entity under: (a) any existing law, code, ordinance, or
governmental rule or regulation to which the Apple Patents,
the Apple License or the Permitted Apple Sublicense (if
permitted herein), or Licensor is subject; (b) any judgment,
order, ruling or award of any court, arbitrator, governmental
authority or agency which is applicable to the Apple Patents,
the Apple License or the Permitted Apple Sublicense (if
permitted herein), or Licensor; or (c) any mortgage,
indenture, agreement, contract, understanding, commitment,
lease, plan, authorization, lien, pledge, charge or other
instrument, document or understanding, oral or written, to
which Licensor or any of its affiliates or subsidiaries is a
party, by which the Apple Patents, the Apple License or the
Permitted Apple Sublicense (if permitted herein) may be bound
or affected, or give any party with rights thereunder the
right to terminate, modify, accelerate or otherwise change the
existing rights or obligations of Licensor or any of its
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affiliates or subsidiaries thereunder. Subject to the terms
contained hereof, Licensor may at its sole and absolute
discretion elect, but shall not be obligated, to grant the
Apple License or Permitted Apple Sublicense if agreements
entered among Licensor and SensoMotoric Instruments GmbH prior
to the date first set forth above in the preamble, including,
without limitation, those certain agreements between Licensor
and SensoMotoric Instruments GmbH dated on or about July 29,
2002 and December 19, 2002, are determined by Licensor and its
legal counsel in their sole and absolute discretion to legally
permit such granting of the Apple License or Permitted Apple
Sublicense.
(e) In the event that Licensee elects to exercise its option under
subsection (a) hereinabove, Licensee shall provide written
notice to Licensor of such exercise. Licensor and its legal
counsel shall have thirty (30) days from receipt to make a
determination and review of its rights pursuant to subsection
(c) hereinabove. If Licensor and its legal counsel determine
in their sole and absolute discretion to grant the Apple
License to Licensee in accordance with the terms hereof,
Licensor will notify Licensee in writing of such
determination. The Apple License shall be deemed to be
conveyed and granted to Licensee upon full payment to Licensor
of the Apple Patents License Fee pursuant to the terms of
Section 3.01 hereof.
(f) No additional license, grant, or working right is hereby
granted or implied by this Agreement.
SECTION 2.02 CONDITIONS AND RESTRICTIONS ON LICENSES, PERMITTED SUBLICENSES AND
--------------------------------------------------------------------------------
RIGHTS.
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(a) PATENT MARKING. Each Product shall include the patent
number(s) of the Licensed Patent(s) appertaining to such
Product and all appropriate legal notices as required by
applicable law and regulation of any sovereignty, government,
or agency including, without limitation, any government or
agency of any foreign country, or any federal, state or local
government or agency.
(b) LIMITATIONS ON LICENSE AND USE BY LICENSEE.
(i) Licensee acknowledges that the Licensed Patents are
proprietary to Licensor, and that Licensor retains all right,
title, and interest therein and thereto and that Licensee and
other parties have no rights therein other than as set forth
in this Agreement.
(ii) Licensee agrees that it will not directly or indirectly,
export or transmit the Products licensed under this Agreement,
in whole or in part, to any country to which such export or
transmission is restricted by any applicable U.S. regulation
or statute, without prior written consent, if required, of the
Bureau of Export Administration of the U.S. Department of
Commerce, or other such governmental entity as may have
jurisdiction over such export or transmission.
(iii) Except as expressly permitted in Sections 2.00 (b), 2.01
(b)(ii), and 12.11 hereof, any License granted to Licensee
shall not include any right to grant sublicenses or otherwise
transfer or assign such License or any rights relating
thereto.
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(c) CONDITIONS AND LIMITATIONS ON PERMITTED SUBLICENSES.
(i) All Permitted Sublicenses granted to Licensee's
Subsidiary Sublicensees are subject to all of the terms
and conditions of this Agreement and Licensee shall
cause all such Licensee's Subsidiary Sublicensees to
execute written agreements (collectively, the
"SUBLICENSE AGREEMENTS") acknowledging Licensor's
ownership and other rights in and to the Licensed
Patents and agreeing to observe and be bound by all of
the terms and conditions contained in this Agreement.
(ii) Licensee agrees to strictly enforce against the
Licensee's Subsidiary Sublicensees all of the provisions
of this Agreement which are required to be included in
such applicable Sublicense Agreements for the protection
of Licensor, to advise Licensor of any violations
thereof, and of corrective actions taken by the
Licensee's Subsidiary Sublicensees and the results
thereof, and at the request of Licensor to terminate
such Sublicense Agreement and the Permitted Sublicense
with any Licensee's Subsidiary Sublicensee which
violates any of such provisions for the protection of
Licensor. Licensee further agrees to immediately advise
Licensor of any violations by Licensee's Subsidiary
Sublicensees under any Sublicense Agreements that become
known to Licensee and upon Licensee coming into
knowledge of any such violations, to strictly enforce
against Licensee's Subsidiary Sublicensees all of the
provisions which are required to be included in such
applicable Sublicense Agreements for the protection of
Licensor, and to advise Licensor of corrective actions
taken by the Licensee's Subsidiary Sublicensees and the
results thereof, and at the request of Licensor to
terminate such Sublicense Agreement and the Permitted
Sublicense with any Licensee's Subsidiary Sublicensee
which violates any of such provisions for the protection
of Licensor.
If Licensee fails to exercise such termination rights by
giving written notice to such breaching Permitted Sublicensee
in question within 20 days after being requested to do so in
writing by Licensor, Licensee appoints Licensor its
irrevocable attorney-in-fact to send a notice of termination
in the name of Licensee to such Permitted Sublicensee for the
purpose of terminating the applicable Permitted Sublicense or
any specific rights of such Permitted Sublicensee under such
applicable Permitted Sublicense.
(d) SURVIVAL. This Section 2.02 shall survive the expiration
or termination of this Agreement.
ARTICLE III
LICENSING FEES
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SECTION 3.00 LIN SCANNING PATENTS LICENSE FEE.
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Licensee will pay a license fee in the total amount of Nine Hundred
Thousand (U.S.$900,000) United States Dollars for the license granted to
Licensee with respect to the Lin Scanning Patents pursuant to Section 2.00
hereinabove (the "LIN SCANNING PATENTS LICENSE FEE"). Payment of the Lin
Scanning Patents License Fee will be as follows:
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(a) An initial payment ("Initial Payment") of Three Hundred Thousand
(U.S.$300,000) United States Dollars to Licensor in cash or U.S.
government readily available funds or wire transfer to SunTrust
Bank Atlanta, Atlanta, Georgia, ABA Routing# XXXXX, SWIFT# XXXXX,
Acct# XXXXX on or before March 3, 2005; and
(b) Eight (8) equal consecutive monthly payments of Seventy-Five
Thousand (U.S.$75,000) United States Dollars to Licensor in cash
or U.S. government readily available funds or wire transfer to
SunTrust Bank Atlanta, Atlanta, Georgia, ABA Routing# XXXXX,
SWIFT# XXXXX, Acct# XXXXX, due March 15, 2005 and on the
fifteenth (15th) day of each month thereafter.
SECTION 3.01 APPLE PATENTS LICENSE FEE.
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Upon Licensee exercising its option to acquire a license from Licensor
pertaining to the Apple Patents in accordance with the terms of Section 2.01
hereinabove, Licensee, as consideration for such license and rights granted to
Licensee, shall immediately pay in full to Licensor a license fee in the amount
of Xxx Xxxxxxx Xxxxxxxx (X.X.x000,000) Xxxxxx Xxxxxx Dollars in cash or U.S.
government readily available funds as directed by Licensor (the "APPLE PATENTS
LICENSE FEE").
SECTION 3.02 TAXES, ASSESSMENTS AND OTHER CHARGES.
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Licensee agrees to pay when due (or, if necessary, reimburse Licensor
for) all sales, use, value added, property, excise and other similar taxes,
assessments, duties, tariffs and charges (except for income and capital gains
taxes realized by Licensor) imposed by a governmental or public entity or agency
relating to or resulting from this Agreement.
ARTICLE IV
COOPERATION IN ENFORCEMENT PROVISIONS
-------------------------------------
SECTION 4.00 COOPERATION IN ENFORCEMENT PROVISIONS.
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Licensor and Licensee will cooperate in the enforcement of the existing
Lin Scanning Patents and in the co-prosecution of applications of all types
related to the Lin Scanning Patents in accordance with the express terms
contained herein. If either Licensee or Licensor becomes aware of any third
party infringement of the Lin Scanning Patents or of a license request for the
Lin Scanning Patents, either Party will promptly notify the other.
(a) If Licensor deems it necessary to defend the Lin Scanning Patents
or if Licensor suspects a third party of infringing the Lin Scanning Patents or
Licensee notifies Licensor in writing that Licensee suspects a third party is
infringing the Lin Scanning Patents, Licensor shall have the sole right to take
all actions necessary to defend and protect its rights in the Lin Scanning
Patents. In the event that Licensee desires to participate or join in any such
suit or action Licensee may notify Licensor in writing of such request;
PROVIDED, HOWEVER, Licensor shall have sole and absolute discretion to permit or
deny Licensee the right to participate or join in such action or suit, and
PROVIDED FURTHER, that such permitted participation by Licensee only shall be
subject to mutually agreeable terms.
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(b) If Licensee notifies Licensor in writing that Licensee suspects a
third party is infringing upon the Lin Scanning Patents, and within ninety (90)
days from such notice, Licensor declines to pursue such infringement on its own,
Licensee may, subject to the terms contained herein, assist Licensor by
instituting and prosecuting a suit for infringement in Licensor's name and
supporting the litigation at its (Licensee's) own expense, and Licensor will
pursue the infringement as plaintiff and will cooperate as reasonably necessary
by Licensor to pursue the third party infringer and resolve the dispute to the
mutual satisfaction of both Licensee and Licensor. If pursuant to this
subsection (b) Licensee assists Licensor by instituting and prosecuting a suit
for infringement in Licensor's name and supporting the litigation at its
(Licensee's) own expense and such suit is resolved through monetary settlement
or if judgment is obtained, Licensor will receive thirty percent (30%) and
Licensee will retain seventy percent (70%), respectively, of any net royalties,
fees or damages resulting from the enforcement activities of Licensor and/or
Licensee, after first deducting all fees or expenses incurred by Licensee and
Licensor in supporting the litigation.
(c) Notwithstanding anything stated to the contrary, Licensor shall
have sole control and final decision making authority with respect to any
litigation, suit, proceeding or settlement relating to any of the Licensed
Patents.
ARTICLE V
TERM AND TERMINATION
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SECTION 5.00 TERM.
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This Agreement shall have a term ("TERM") beginning on the Effective
Date and expiring on the date of the last to expire of any of the Lin Scanning
Patents ("EXPIRATION DATE"), unless terminated earlier according to Section
5.01. Notwithstanding the immediately preceding sentence, as to each of the Lin
Scanning Patents, the License and any and all rights granted in this Agreement
to each of the Lin Scanning Patents shall terminate simultaneously with
expiration of each such Lin Scanning Patent.
SECTION 5.01 TERMINATION.
-------------------------
(a) Licensor may terminate this Agreement by giving written notice of
termination to Licensee upon the occurrence of any of the following events:
(i) Licensee defaults in the performance of any requirement or
obligation created by this Agreement (other than as identified in Subsection
(a)(ii) below) and Licensee fails to cure such default within sixty (60) days
following receipt of written notice from Licensor identifying such default;
(ii) Licensee fails to make any payment to Licensor fifteen (15)
days of its due date under this Agreement; or
(iii) If prior to completion of all payments due Licensor including,
without limitation, the payments due under Section 3.00 and Section 3.01,
Licensee ceases doing business; Licensee is the subject of any state or federal
bankruptcy, insolvency, or similar proceeding, becomes insolvent or makes an
assignment for the benefit of creditors; a receiver is appointed for a
substantial part of its assets or stock; Licensee sells, conveys or transfers or
attempts to sell, convey or transfer a substantial (greater than fifty (50%)
percent) part of its refractive assets or stock; or any action is taken toward
the liquidation or winding up of its business, upon the occurrence of any such
event Licensor shall have the right to immediately accelerate all remaining
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payments due under Sections 3.00 and 3.01.
(b) No termination of this Agreement shall release Licensee from its
obligations under Article III herein, any obligation to pay Licensor any amount
that has accrued or become payable at or prior to the date of termination, or
any obligation which shall survive the termination of this Agreement pursuant to
Section 12.08 (b) hereof.
(c) The Parties agree that termination of this Agreement would be of
serious consequence, and therefore, the Parties agree that, except for
termination pursuant to Section 5.01(a)(ii) and Section 5.01(a)(iii), there
shall be no termination of this Agreement until the issue of termination has
been finally resolved in accordance with Article VI of this Agreement.
(d) In the event of a termination of this Agreement under Article V of
this Agreement, such termination (except for termination pursuant to Section
5.01(a)(ii) and Section 5.01(a)(iii)) shall have no effect upon the Permitted
Sublicenses of Licensee's End Users granted prior to the date of such
termination according to Article V of this Agreement.
SECTION 5.02 EFFECT OF TERMINATION.
-----------------------------------
(a) Upon and after any termination of this Agreement, Licensee, its
receivers, trustees, assigns or other representatives shall immediately
surrender all rights, licenses, sublicenses and privileges granted under this
Agreement. Licensee, its receivers, trustees, assigns or other representatives
shall immediately cease using and return without delay all property belonging to
Licensor, including, without limitation, all manuals and informational materials
furnished by Licensor to Licensee for which delivery or receipt has been
acknowledged in writing by Licensor or Licensee. Neither Licensee nor any of its
receivers, trustee, assigns or their representatives shall, in advertising or
otherwise, use or display any of Licensor's trademarks or any name, xxxx or logo
that is the same as or similar to Licensor's trademarks, represent itself to be
a Licensed Patents licensee, or in any way identify itself with Licensor.
(b) All rights, licenses, sublicenses and privileges granted to
Licensee under this Agreement shall automatically terminate and any and all
interests in any such rights, licenses, sublicenses and privileges including,
without limitation, the Licenses and Permitted Sublicenses, shall completely
revert to Licensor on the effective date of termination ("TERMINATION") and
Licensee shall immediately cease any and all further use of the Licensed
Patents.
(c) Within thirty (30) days of Termination of this Agreement, each
Party shall transfer to the other Party possession, custody, and control of all
documentation and other tangible materials referring or relating to the other
Party's Confidential Information.
(d) Subject to Subsection (a), within thirty (30) days of Termination,
Licensee shall transfer to Licensor possession, custody, and control of all
documentation and other tangible materials referring or relating to the Licensed
Patents.
(e) Any and all fees then due and owing pursuant to this Agreement and
as of the date of Termination shall become immediately due and payable upon
Termination.
(f) The provisions of this Section 5.02 shall survive the expiration or
other termination of this Agreement.
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ARTICLE VI
DISPUTE RESOLUTION CLAUSE
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SECTION 6.01 MEDIATION.
-----------------------
In the event of any disagreement between Licensor and Licensee arising
out of the provisions of this Agreement, which, after written notice from one
Party to the other, Licensor and Licensee are unable to resolve amicably within
a thirty (30) day period of time, an officer level representative from each
company shall meet in person in Orlando, Florida, United States of America
within thirty (30) days after written notice to discuss resolution of the
dispute.
SECTION 6.02 ARBITRATION.
-------------------------
Any controversy or claim not successfully mediated in accordance with
Section 6.01 and arising out of, in connection with or relating to the
interpretation, performance or breach of this Agreement or of any document or
agreement delivered under this Agreement, including any claim or controversy
based on contract, tort or statute, shall be settled by binding arbitration. Any
controversy concerning whether a dispute is an arbitrable dispute shall be
determined by the arbitrator. The Parties intend that this agreement to
arbitrate be valid, specifically enforceable and irrevocable. Such arbitration
shall be conducted in Orange County, Florida, United States of America, in
accordance with the Expedited Commercial Arbitration Rules of the American
Arbitration Association (the "AAA"), as modified below:
(i) Disputes shall be heard and determined by a single
neutral arbitrator, as selected by both Parties, or if the Parties
are unable to agree, shall be selected in accordance with the
Expedited Commercial Arbitration Rules of the AAA.
(ii) Neither Party shall communicate separately (ex parte)
with the arbitrator.
(iii) Judgment upon the arbitrator's award may be entered in
any court having jurisdiction thereof in Orange County, State of
Florida, United States of America, and, where applicable, shall be
in accordance with the United Nations Convention on the Recognition
and Enforcement of Foreign Arbitral Awards.
(iv) At the conclusion of the arbitration proceedings, the
arbitrator shall render an award in writing and shall specify the
factual and legal basis for the award. The award shall be final,
binding and non-appealable.
(v) The provisions of this Article VI shall be a complete
defense to any suit, action or proceeding instituted at law in any
federal, state or local court with respect to any dispute arising
with regard to this Agreement; provided, however, and
notwithstanding anything stated to the contrary, each Party shall
have the right to initiate or bring any suit, action or proceeding
seeking equitable remedies or injunctive relief without first having
to resort to mediation or arbitration or any similar alternative
dispute resolution process.
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SECTION 6.03 COSTS OF ARBITRATION.
----------------------------------
The prevailing Party shall be awarded all cost and fees. "COSTS AND
FEES" means all reasonable pre-award expenses of the arbitration, including the
arbitrator's fees, administrative fees, travel expenses, out-of-pocket expenses
such as copying and telephone, court costs, witness fees and reasonable
attorneys' fees and expenses.
ARTICLE VII
NOTICES AND ADDRESSES
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SECTION 7.00 NOTICES.
---------------------
All notices, requests, claims, demands and other communications
hereunder shall be in writing and shall be given (and shall be deemed to have
been duly given upon receipt) by delivery in person, by registered or certified
mail (postage prepaid, return receipt requested) to each other Party as follows:
a) if to Licensor:
LaserSight Incorporated
0000 Xxxxxxxx Xxxxx
Xxxxxx Xxxx, XX 00000
Xxxxxx Xxxxxx of America
Attention Dr. Xxxxx Xxx, President
b) if to Licensee:
Wavelight Laser Technologie AG
c/o Wavelight, Inc.
00000 Xxxxxx Xxx Xxxxx
Xxxxxxxx, Xxxxxxxx 00000
Xxxxxx Xxxxxx of America
Attention: Dr. Manfred Drax, COO
AND
---
Wavelight Laser Technologie AG
Am Xxxxxxxxxxx 0
00000 Xxxxxxxx, Xxxxxxx
Attention: Dr. Manfred Drax, COO
Either Party may change its mailing address for the purpose of this
Agreement by giving the other Party advance written notice of such change
fifteen (15) days prior to the date upon which the change is to become
effective. All written communications, notices, reports or payments shall be
sent by a nationally recognized express courier service or by first-class mail,
postage prepaid and certified.
11
ARTICLE VIII
INFRINGEMENT
------------
SECTION 8.00 NOTICES.
---------------------
If Licensee becomes aware that any person is, or may be, infringing the
Licensed Patents in the United States or elsewhere, Licensee will provide
written notice to Licensor of the infringement along with any available evidence
of such infringement. If Licensor becomes so aware, it shall provide the same
written notice and evidence to Licensee.
SECTION 8.01 PROSECUTION OF ACTIONS.
------------------------------------
Licensor shall have the right, but not the obligation, to initiate and
prosecute at its own expense any action for infringement of the Licensed Patents
and to collect damages for past and future infringement.
If Licensor elects not to initiate and prosecute at its own expense any
action for infringement of the License Patents, Licensee shall have the option,
but not the obligation, to cooperate with Licensor in enforcement of the
existing Lin Scanning Patents by assisting Licensor in instituting and
prosecuting a suit for infringement in Licensor's name by supporting the
litigation at Licensee's own expense and pursuant to the conditions set forth in
Section 4.00 of this Agreement.
ARTICLE IX
EVENT OF BANKRUPTCY
-------------------
SECTION 9.00 EVENT OF BANKRUPTCY.
---------------------------------
All licenses granted under this Agreement by Licensor to Licensee, for
all purposes of Section 365(n) of Title XI of the United States Code ("TITLE
XI"), are licenses of rights to "intellectual property" as defined in Title XI.
For as long as Licensee has a license pursuant to this Agreement Licensor shall
create and maintain current copies to the extent practicable of all such
intellectual property which shall include, without limitation, the documents
supporting the Licensed Patents. If during the period of time Licensee has a
license pursuant to this Agreement a bankruptcy proceeding is commenced by or
against Licensor under the Title XI, Licensee shall be entitled to a copy of any
and all such intellectual property at the same time, if not in the possession of
Licensee, shall be promptly delivered to it (i) upon Licensee's written request
following the commencement of such bankruptcy proceeding, unless prohibited by
applicable law or unless Licensor, or its trustee or receiver, elects within 30
days to continue to perform all of its obligations under this Agreement; or (ii)
if not delivered as provided under clause (i) above, upon Licensee's request
following the rejection of this Agreement by or on behalf of Licensor, unless
prohibited by applicable law. If Licensee has taken possession of all applicable
embodiments of the intellectual property of Licensor pursuant to this Section
and the trustee in bankruptcy of Licensor does not reject this Agreement,
Licensee shall promptly return such embodiments. If Licensor seeks or
involuntarily is placed under Title XI and the trustee rejects this Agreement as
contemplated under 11 U.S.C. 365(n) (1), Licensee reserves all of its rights
including, without limitation, the right to elect pursuant to Section 365(n) to
retain all rights granted to Licensee under this Agreement to the extent
permitted by law.
12
ARTICLE X
PATENT MAINTENANCE; BOOKS AND RECORDS
-------------------------------------
SECTION 10.00 PATENT MAINTENANCE.
---------------------------------
Licensor shall pay all fees and costs necessary to maintain the
Licensed Patents for their full terms, unless such fees or costs are
necessitated by an act or omission on the part of Licensee which shall be the
responsibility of Licensee.
SECTION 10.01 PATENT PROCEEDINGS.
---------------------------------
In the event any of the Licensed Patents are subject to a legal or an
administrative proceeding concerning patent validity, patentability or a related
issue, Licensor shall inform Licensee of such proceeding and keep Licensee
regularly apprised of such proceedings.
ARTICLE XI
CONFIDENTIALITY
---------------
SECTION 11.00 CONFIDENTIAL TERMS.
---------------------------------
The terms and conditions of this Agreement shall be confidential and
shall not be disclosed by any of the Parties to the Agreement to any third
party, other than an actual affiliate, a Permitted Sublicensee or permitted
successor or assign, or to inform members of the investment community that
Licensee has obtained a license of the Lin Scanning Patents with certain rights
of enforcement thereto and an option with respect to the Apple Patents except
that (i) Licensee can communicate the commercial terms to potential customers
and its distributors, representatives, agents and users on a confidential basis,
(ii) Licensor can communicate the terms of the Agreement to a potential
licensee, investor or acquiror on a confidential basis, (iii) the Parties may,
to the extent required by law, regulation or accounting rules disclose the
existence and/or terms of the Agreement but only to the extent compelled and on
a confidential basis, and (iv) any of the Parties may disclose the terms and
conditions of this Agreement if such Party receives a subpoena or other process
or order to produce this Agreement, provided that such Party shall, prior to any
disclosure to any third party, promptly notify the other Parties to this
Agreement so that each Party has a reasonable opportunity to respond to such
subpoena, process or order. The Party receiving a subpoena, process or order
shall (in the first instance) take no action contrary to the confidentiality
provisions set forth above, and shall make reasonable efforts to respond only
subject to a protective order. The Party objecting shall have the burden of
defending against such subpoena, process or order. The Party receiving the
subpoena, process or order shall be entitled to comply with it, except to the
extent that any other Party is successful in obtaining an order modifying or
quashing it.
SECTION 11.01 CONFIDENTIAL DISCLOSURE.
--------------------------------------
During the term of this Agreement, either Party may disclose
confidential information to the other Party. Accordingly, all information
received by either Party, directly or indirectly incident to this Agreement,
including the terms and conditions of this Agreement, shall, except as specified
in Section 11.00 above, be held in strictest confidence, and the receiving Party
shall not either directly or indirectly disclose or use, except in performance
of its obligations under this Agreement, any such information of any kind or
character as may be disclosed or otherwise imparted to the receiving Party or as
13
may be developed during the course of this Agreement, and that all such
information shall be held in the strictest confidence. The foregoing obligations
of confidentiality and non-use shall remain in effect for the life of the
Agreement unless waived by either Party upon request of the other Party.
ARTICLE XII
MISCELLANEOUS
-------------
SECTION 12.00 SEVERABILITY.
---------------------------
If any provision of this Agreement shall for any reason or to any
extent be invalid or unenforceable, the remainder of this Agreement shall not be
affected thereby, but rather shall be enforced to the greatest extent permitted
by law.
SECTION 12.01 COUNTERPARTS.
---------------------------
This Agreement may be executed in multiple counterparts, each of which
shall be deemed an original, but all of which shall be deemed one and the same
instrument.
SECTION 12.02 HEADINGS.
-----------------------
The headings used in this Agreement are used for administrative
purposes only and do not constitute substantive matter to be considered in
construing the terms of this Agreement.
SECTION 12.03 ENTIRE AGREEMENT.
-------------------------------
This Agreement and that certain Mutual Release among the Parties of
even date herewith embody the entire agreement between the Parties relating to
the subject matter hereof. All prior arrangements or understandings are hereby
superseded and canceled. No change, modification, or waiver of this Agreement or
any term thereof shall be valid or binding unless it is in writing and signed by
the Party intended to be bound.
SECTION 12.04 BINDING EFFECT.
-----------------------------
Except as otherwise provided herein, the terms, obligations, covenants,
provisions, conditions and agreements herein shall bind and inure to the benefit
of the successors, permitted transferees and permitted assigns of Licensee and
Licensor.
SECTION 12.05 CHOICE OF LAW; VENUE.
-----------------------------------
THE VALIDITY, INTERPRETATION, PERFORMANCE AND ENFORCEMENT OF THIS
AGREEMENT SHALL BE GOVERNED BY THE LAWS OF THE STATE OF FLORIDA, UNITED STATES
OF AMERICA (WITHOUT GIVING EFFECT TO ITS LAWS, RULES OR PRINCIPLES REGARDING
CONFLICT OF LAWS). EACH PARTY CONSENTS AND SUBMITS TO THE NON-EXCLUSIVE PERSONAL
JURISDICTION OF ANY FEDERAL OR STATE COURT IN ORANGE COUNTY, FLORIDA, UNITED
STATES OF AMERICA, IN RESPECT OF ANY SUCH PROCEEDING. EACH PARTY CONSENTS TO
SERVICE OF PROCESS UPON IT WITH RESPECT TO ANY SUCH PROCEEDING BY REGISTERED
MAIL, RETURN RECEIPT REQUESTED, AND BY ANY OTHER MEANS PERMITTED BY APPLICABLE
LAWS AND RULES. EACH PARTY WAIVES ANY OBJECTION THAT IT MAY NOW OR HEREAFTER
14
HAVE TO THE LAYING OF VENUE OF ANY SUCH PROCEEDING IN ANY COURT IN ORANGE
COUNTY, FLORIDA, UNITED STATES AND ANY CLAIM THAT IT MAY NOW OR HEREAFTER HAVE
THAT ANY SUCH PROCEEDING IN ANY COURT IN ORANGE COUNTY, FLORIDA, UNITED STATES
HAS BEEN BROUGHT IN AN INCONVENIENT FORUM.
SECTION 12.06 WARRANTIES AND COVENANTS.
---------------------------------------
Licensor warrants that (i) it is the owner of the entire right, title
and interest to each and all of the patent properties that comprise the Licensed
Patents; (ii) it has the full right to grant a non-exclusive license to the Lin
Scanning Patents as provided in this Agreement; (iii) ATTACHMENT "A" sets forth
a complete and accurate list of all pending and issued Patents that, as of the
date first set forth above in the preamble, comprise the Lin Scanning Patents
and the Apple Patents; and (iv) the ownership of the Patents indicated on
ATTACHMENT "A" is consistent with the books and records of both Licensor and the
relevant Patent and Trademark Offices.
SECTION 12.06.1.
----------------
Licensor warrants that it has the full power, right and authority to
enter into and carry out its obligations under this Agreement and that this
Agreement constitutes the valid and legally binding obligation of Licensor
enforceable in accordance with its terms and conditions.
SECTION 12.06.2.
----------------
Licensee warrants that Licensee has full power, right and authority to
enter into and carry out its obligations under this Agreement and that this
Agreement constitutes the valid and legally binding obligations of Licensee
enforcement in accordance with its terms and conditions.
SECTION 12.07 PUBLIC ANNOUNCEMENTS.
-----------------------------------
No Party shall issue any press release or make any public statement
regarding the terms of this Agreement unless required by applicable laws or
regulations, including, without limitation, any filings as required by
applicable securities laws or the United States Securities and Exchange
Commission. However, this Section shall not preclude either Party from making
any public statement necessary to implement the business objectives of either
Party as set forth in Section 11.00. In the spirit of cooperation, both Parties
agree to provide advance notice of such public statement to the other Party and
to solicit the other Party's comments.
Neither Party shall make reference to the other in a press release or
any other written statement connected with public media in connection with this
Agreement, except with the prior written approval of the other Party, which
shall not be unreasonably withheld. In any such statements, Licensor shall
describe the scope and nature of the Party's participation accurately and
appropriately. The Parties shall not use, nor permit to be used by any other
person or entity, the name of any other Party, nor any adaptation thereof, or
the name of any other Party's employees in any advertising, promotional or sales
literature or for any other purpose without the prior written permission of the
other Party.
15
SECTION 12.08 SURVIVAL PROVISIONS.
----------------------------------
(a) The License and/or other rights granted under this Agreement shall
survive any sale or transfer of any of the Lin Scanning Patents or Apple Patents
to any third party. Licensor hereby covenants that any subsequent sale or
transfer of the Lin Scanning Patents or the Apple Patents shall expressly make
reference to the License and the option granted in Sections 2.00 and 2.01
herein.
(b) Sections 2.02, 3.00, 3.01, 3.02, 5.02, 11.00, 12.10, 14.00 and
14.01 and Article XIII shall survive the expiration or earlier termination of
this Agreement and continue in full force.
SECTION 12.09 GOVERNING LANGUAGE.
---------------------------------
The English language version of this Agreement shall be controlling in
all respects, irrespective of whether another translation is or shall be made
hereof. Further, all correspondence, notices, demands and other writings between
the Parties shall be in English.
SECTION 12.10 INDEPENDENT CONTRACTOR.
-------------------------------------
This Agreement does not constitute and shall not be construed as
constituting a partnership or joint venture between the Parties. Neither Party
shall have any right to obligate or bind the other Party in any manner
whatsoever, and nothing herein contained shall give, or is intended to give, any
rights of any kind to any third persons. Each Party is an independent contractor
not affiliated with the other Party, and shall retain its independent status
throughout this Agreement and use its own discretion in its performance thereof.
No employment relationship is created by this Agreement. Each Party will report
as income to the appropriate government agencies all compensation received by it
pursuant to this Agreement and will pay all applicable taxes. Neither Party
shall make deductions from its fees, nor shall it in any way be deemed liable to
the other Party, for taxes, insurance, bonds, or any other subscription of any
kind. Each Party will be responsible for and will promptly pay all relevant
taxes, chargeable or assessed with respect to its employees. The employees and
sub-contractors of each Party will be under the sole and exclusive direction and
control of such Party, will not be considered employees of the other Party for
any purpose, and are ineligible for any employee benefits from such other Party.
Each Party shall comply with all relevant and applicable United States and
international, local, state, and federal requirements, ordinances, regulations,
and laws pertaining to the performance of this Agreement.
SECTION 12.11 ASSIGNMENT.
-------------------------
Licensor shall have the right to assign this Agreement, or any or all
of its rights, duties, and/or obligations thereunder, to a third party, without
the prior written consent of Licensee. Licensee may not assign this Agreement or
any or all of its rights, duties, and/or obligations thereunder to a third
party, EXCEPT, following full payment of the Lin Scanning Patents License Fee
and the Apple Patents License Fee (if the Apple License and the Permitted Apple
Sublicense are granted hereunder), in connection with the sale, transfer, or
acquisition of all or substantially all of Licensee's assets or a business
division of Licensee to a third party, or a merger with or acquisition by a
third party ("PERMITTED LICENSEE'S ASSIGNEE") of Licensee (the "PERMITTED
ASSIGNMENT"), and then only to the extent that (i) such Permitted Assignment is
made expressly subject to the terms and conditions of this Agreement including,
without limitation, Sections 2.00 and 2.01 hereof, (ii) each product
manufactured, used or sold by the Permitted Licensee's Assignee which consists
partially or wholly any of the Licensed Patents shall only be within the
Licensed Field of Use and fall within the definition and parameters of the term
"Products" as defined hereinabove, (iii) the Permitted Licensee's Assignee
16
agrees in writing to observe and be bound by the terms and conditions hereof as
if an original signatory hereto, (iv) at least thirty (30) days' prior written
notice of such Permitted Assignment is provided to Licensor, and (v) Licensee
acknowledges to Licensor in writing that all of Licensee's rights under this
Agreement and the License hereunder shall terminate effective upon such
Permitted Assignment and that Licensee thereafter shall have no further rights,
interests or claims in, under or to the Licensed Patents, the License and this
Agreement. The Parties agree that upon a Permitted Assignment, all Permitted
Sublicenses to Licensee's Subsidiary Sublicensees shall terminate simultaneously
with such Permitted Assignment and all Licensee's End Users shall continue to
have a Permitted Sublicense pursuant to the terms contained herein.
SECTION 12.12 FORCE MAJEURE.
----------------------------
Neither Party will be deemed in breach or default of this Agreement to
the extent that performance of its obligations or attempts to cure any breach
are delayed or prevented by reason of any act of God, fire, natural disaster,
accident, act of government, or an act that is beyond the reasonable control of
either Party, provided that such Party gives the other Party written notice
thereof promptly and, in any event, within fifteen (15) days of discovery
thereof and uses its best efforts to continue to so perform or cure. In the
event of such a Force Majeure, the time for performance or cure will be extended
for a period equal to the duration of the Force Majeure, but in no event more
than thirty (30) days.
ARTICLE XIII
INSURANCE AND INDEMNIFICATION
-----------------------------
SECTION 13.00 INSURANCE.
------------------------
Licensee agrees to obtain and maintain during the period of this
Agreement, and for three years following expiration or termination of this
Agreement, at its own expense, product liability insurance providing protection
(at a minimum, in the amount of $2,000,000 per occurrence/$2,000,000 annual
aggregate) applicable to any claims, liabilities, damages, costs, or expenses
arising out of any defects or alleged defects in the Products. Within 30 days
after the execution of this Agreement, Licensee shall cause the insurance
company issuing such policy to issue a certificate to Licensor confirming that
such policy has been issued and is in full force and effect, and also confirming
that before any cancellation, modification, or reduction in coverage of such
policy below the amount specified herein, the insurance company shall give
Licensor 30 days' prior written notice of such proposed cancellation,
modification, or reduction. Any insurance carried by Licensor shall be deemed
excess insurance, not subject to contribution.
SECTION 13.01 INDEMNIFICATION BY LICENSEE.
------------------------------------------
Licensee agrees to defend, indemnify and hold harmless Licensor against
any loss, liability, damage, cost or expense, including reasonable legal fees,
arising out of any claims or suits, whatever their nature and however arising,
which may be brought or made against Licensor by reason of or arising from any
(i) breach of any term, condition, obligation, representation, or warranty of
this Agreement by Licensee (ii) allegation, claim or suit that use of any or all
of the Licensed Patents as modified, altered, or otherwise changed by or on
behalf of Licensee or Permitted Sublicensees infringes, interferes with, or
otherwise violates the intellectual property of a third party, or (iii) the use
of the Products licensed under this Agreement. Licensee shall have sole control
17
over the selection of counsel and the defense of any claim or any settlement
thereof, and Licensor shall provide Licensee with its reasonable assistance in
the defense of such claim, at the expense of Licensee. In no event may Licensee
enter into any third party settlement agreements which would in any manner
whatsoever affect the rights of, or bind, Licensor in any manner to said third
party, without the prior written consent of Licensor.
ARTICLE XIV
INTELLECTUAL PROPERTY; LAWS; LIMITATION OF LIABILITY AND WARRANTY
SECTION 14.00 INTELLECTUAL PROPERTY; LAWS.
------------------------------------------
(a) Licensee shall provide Permitted Sublicensees with appropriate
notice of the terms and conditions of the limited License granted herein,
including, without limitation, the limitations regarding access and use of the
Licensed Patents.
(b) Licensee shall make reasonable efforts to prevent infringement of
any intellectual property or other rights of Licensor and agrees to protect
Licensor's title and rights in and to the Licensed Patents. Licensee shall not
take any action or fail to take any action, or suffer to be done any act or
thing which in any way is adverse, harmful or prejudicial to Licensor's
proprietary or legal rights to the Licensed Patents.
(c) As between Licensor and Licensee, Licensor shall be the owner of
all right, title and interest in and to the Licensed Patents.
(d) Licensee hereby irrevocably grants, transfers, and assigns to
Licensor, without reservation, all worldwide ownership rights, title and
interest, including any and all intellectual property rights which Licensee may
have or acquire, by operation of law or otherwise, in and to any and all of the
Licensed Patents, along with the good will of the business appurtenant to the
use of any intellectual property or other rights so assigned. Licensee further
hereby irrevocably transfers and assigns to Licensor any and all moral rights
that Licensee may have in the Licensed Patents, and hereby forever waives and
agrees never to assert any and all moral rights it may have therein, even after
termination of the Agreement. Licensee, at the written request and expense of
Licensor, agrees to execute any and all documentation necessary to formally
transfer such rights to Licensor.
(e) Licensor shall have the right, but not the obligation, to file and
prosecute the Licensed Patents, in its own name and at its own cost, in all
jurisdictions. Licensee agrees to reasonably cooperate with Licensor, at the
request of Licensor, in providing any information, documentation, or other
assistance to Licensor reasonably necessary to enable Licensor to file and
prosecute the Licensed Patents in accordance with this Section. In no event
shall Licensee have the right to file or prosecute, in its own name or on behalf
of Licensor, any of the Licensed Patents in any jurisdiction without the prior
written consent of Licensor.
(f) Licensor may at its sole discretion enforce the Licensed Patents in
any jurisdiction, in its own name and at its own cost, against any and all third
parties whose activities (i) violate, infringe, unfairly compete with, or are
likely to violate, infringe, or unfairly compete with any or all of the Licensed
Patents licensed to Licensee hereunder, and (ii) causes, or is likely to cause,
harm, injury, or damage to, Licensee or Licensor. Licensee agrees to promptly
notify Licensor in writing of any such third party infringement or unfair
competition, and shall request that Licensor take appropriate action, including
the institution of legal proceedings for equitable and/or monetary relief,
18
against such third party. Notwithstanding the foregoing, Licensor shall have the
right to refrain from taking any such action so requested by Licensee for any
reason whatsoever including, without limitation, if, in the reasonable business
determination of Licensor, such requested action cannot be undertaken without
unreasonable expense or risk to Licensor and/or the Licensed Patents. In no
event shall Licensee have the right to undertake any such action at its own
expense, in its own name or on behalf of Licensor, without the express prior
written consent of Licensor.
SECTION 14.01 LIMITATION OF LIABILITY AND WARRANTY.
---------------------------------------------------
UNLESS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSOR
LICENSES THE LICENSED PATENTS "AS IS" AND MAKES NO REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, REGARDING
THE LICENSED PATENTS OR ITS USE AND OPERATION, AND/OR IF AND TO THE EXTENT
MODIFIED BY OR ON BEHALF OF LICENSEE. Licensee shall have no right to make any
other representations, warranties or promises with respect to the Licensed
Patents, and, to the extent made, such other representations, warranties or
promises shall be void, invalid, and unenforceable against Licensor.
IN NO EVENT, WHETHER AS A RESULT OF BREACH OF CONTRACT, WARRANTY, TORT
(INCLUDING NEGLIGENCE OR INFRINGEMENT), STRICT LIABILITY OR OTHERWISE, SHALL
LICENSOR, OR ITS SUBCONTRACTORS OR SUPPLIERS, OR THEIR PARENTS, AFFILIATES, OR
SUBSIDIARIES BE LIABLE FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL, INDIRECT OR
EXEMPLARY DAMAGES, INCLUDING, BUT NOT LIMITED TO, LOSS OF PROFITS OR REVENUES,
LOSS OF USE OF THE LICENSED PATENTS, COST OF CAPITAL, COST OF SUBSTITUTE GOODS,
FACILITIES, SERVICES OR DOWNTIME COSTS.
[Signatures on Next Page]
19
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement on
the last day indicated below.
LASERSIGHT INCORPORATED
______2/24/05_____________ /S/ XXXXXXX XXX
------------------------------------
DATE Xx. Xxxxxxx Xxx
President
WAVELIGHT LASER TECHNOLOGIE AG
________2/24/05___________ ______/s/ Max Reidl_________________
DATE Xxx Xxxxxx
Chief Executive Officer
WAVELIGHT LASER TECHNOLOGIE AG
_______2/24/05___________ ______/s/ Xxxxxxx Drax______________
DATE Xxxxxxx Drax
Chief Operating Officer
20
ATTACHMENT "A"
LIN SCANNING PATENTS INVENTORY
------------------------------
1. 5,520,679 Inventor: Lin. OPHTHALMIC SURGERY METHOD USING NON-CONTACT SCANNING
LASER. Issued: 05.28.1996.
2. RE37,504 Inventor: Lin. OPHTHALMIC SURGERY METHODUSING NON-CONTACT SCANNING
LASER. Issued: 01.08.2002.
3. 6,716,210 Inventor: Lin. REFRACTIVE SURGICAL LASER APPARATUS AND METHOD.
Issued: 04.04.2004.
APPLE PATENTS INVENTORY
-----------------------
1. 6,007,202 Inventors: Apple, Xxxxxx, Xxx. EYE ILLUMINATION SYSTEM AND METHOD.
Issued: 12.28.1999.
2. 6,193,373 Inventors: Apple, Xxxxxx, Xxx. EYE ILLUMINATION SYSTEM AND METHOD.
Issued: 02.27.2001.
3. 6,334,683 Inventors: Apple, Xxxxxx,Xxx. EYE ILLUMINATION SYSTEM AND METHOD.
Issued: 01.01.2002.
21