Patent License Agreement
Patent
License Agreement
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Licensor
name:
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Futuristic
Medical Devices, LLC
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Licensor
address:
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00 Xxxxxxx
Xxxxxx
Xxxxxx, Xxx Xxxx
00000
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Licensee
name:
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Volu-Sol
Reagents Corporation
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Licensee
address:
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0000
Xxxx 0000 Xxxxx
Xxxx
Xxxxxx Xxxx, Xxxx 00000
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Upfront
Royalty Payment:
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$300,000.00
(Three Hundred Thousand Dollars)
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Royalty
Percentage:
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5%
(Five Percent)
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In
witness whereof, intending to be legally bound, the parties have signed below to
enter the attached Patent License Agreement and Exhibits (this “Agreement”) as of the
Effective Date with the terms and conditions that follow. Capitalized
terms not otherwise defined are set forth in Section 9 of this
Agreement.
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LICENSOR:
FUTURISTIC
MEDICAL DEVICES LLC
By: /s/ Xxxxx
Xxxxxxxx
Name: Xxxxx
Xxxxxxxx
Title: Manager
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LICENSEE:
VOLU-SOL
REAGENTS CORPORATION
By: /s/ Xxxxx
Xxxxxx
Name: Xxxxx
Xxxxxx
Title: Chairman &
CEO
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Effective
Date: May 1, 2009
PATENT
LICENSE AGREEMENT
The
parties to this Patent License Agreement listed on the previous page hereby
agree as follows:
1.
Grant of Exclusive License
1.1 Exclusive
Patent License
Licensor
hereby grants to Licensee the exclusive, irrevocable, worldwide, transferable,
sublicensable license of all rights of any kind conferred by the Patents,
including, without limitation, the rights of any kind to, or conferred by, the
Patents to (a) use or otherwise practice any art, methods, processes, and
procedures covered by the Patents, (b) make, have made, use, offer to sell,
sell, import, and otherwise distribute or dispose of any inventions,
discoveries, products, services, or technologies covered by the Patents,
(c) otherwise exploit any rights granted in the Patents and/or any
invention or discovery described in the Patents, and (d) exclude other
Persons from exercising any of such rights.
1.2 Sublicenses
The
exclusive license rights granted Licensee under the Patents include the right to
grant and authorize, from time to time and in Licensee's sole and absolute
discretion, one or more sublicenses. No sublicense granted to any
Person pursuant to the terms of this Agreement will be terminable as a result of
the termination of this Agreement.
1.3 Assignment
of Causes of Action and Other Rights
Licensor
hereby assigns, transfers and conveys to Licensee all right, title and interest
in and to:
(a) Rights
to apply in any or all countries of the world for patents, certificates of
invention, utility models, industrial design protections, design patent
protections, or other governmental grants or issuances of any type related to
any of the Patents and the inventions and discoveries therein;
(b) All
causes of action and enforcement rights of any kind (whether such claims, causes
of action or enforcement rights are known or unknown; currently pending, filed,
to be filed; or otherwise) under the Patents and/or under or on account of any
of the Patents for past, current and future infringement of the Patents,
including without limitation, all rights to (i) pursue and collect damages,
profits and awards of whatever nature recoverable, (ii) injunctive relief,
(iii) other remedies, and (iv) compromise and/or settle all such
claims, causes of action and enforcement rights for such infringement by
granting an infringing party a sublicense or otherwise; and
(c) Rights
to collect royalties or other payments under or on account of any of the Patents
or any of the foregoing.
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1.4 Right
to Purchase
It is
understood and agreed that the Licensee is also hereby granted the right, at its
sole option and at such time as it may determine, to purchase the
Patents. Upon exercise of this right to purchase, Licensor shall
assign all of its rights and interest in the Patents to Licensee in exchange for
Four Million (4,000,000) shares of the Licensee’s common stock.
2.
Payment
2.1 Upfront
Royalty Payment
At the
Closing, Licensee will pay to Licensor an upfront royalty payment (the “Upfront Royalty
Payment”) in the
amount set forth on the cover page of this Agreement.
2.2 Royalties
Licensee
will pay to Licensor a royalty equal to the Royalty Percentage multiplied by
Licensee’s Net Sales Revenues for Licensed Products. Additionally,
Licensee will pay to Licensor a royalty equal to the Royalty Percentage
multiplied by any revenue received by Licensee for the sublicensing of the
Patents. (collectively, the “Royalties”). The
royalty will be payable on the due dates for the reports required by
paragraph 2.3 for royalties accrued during the respective Reporting
Period.
2.3 Reports
and Records
As of
each December 15 during the Term of this Agreement, Licensee will provide to
Licensor a report reasonably detailing its royalty producing activities with
respect to the Patents for the preceding twelve (12) month period ending as of
September 30 (each,
a “Reporting Period”) when there have been
Royalties accrued under Section 2.2 with respect to the Patents in such
Reporting Period.
2.4 Books
of Account
Licensee
will keep accurate books of account containing all particulars that may
reasonably be deemed necessary for the purpose of showing the Amounts payable to
Licensor hereunder. Not more than once during every twenty-four (24)
month period and upon Licensor’s advance request of at least thirty (30) days,
Licensee will make said books and the supporting data available for inspection
by Licensor or its agents during normal business hours for the two (2) most
recent Reporting Periods for the sole purpose of verifying Licensee's
calculations of the Royalties under this Agreement. Should such
inspection lead to the discovery of a greater than ten percent (10%) discrepancy
in reporting to Licensor's detriment, Licensee agrees to pay the reasonable fees
and expenses of Licensor’s agents who conducted the
inspection. Licensee will promptly pay to Licensor all amounts
appropriately determined by any audit to be due to Licensor. Any and
all disputes with respect to the Royalties due under this Agreement or the
calculation of Net Sales Revenue must be (a) raised within ninety (90) days
after completion of the associated audit, and (b) resolved solely and
exclusively pursuant to the provisions of paragraph 10.8.
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3.
Closing
3.1 Deliverables
Within
thirty (30) days following the later of Effective Date or the date Licensee
receives a Transmitted Copy of this Agreement executed by the Licensor, to the
extent that Licensor has control of such documents, Licensor will deliver to
Licensee copies of the Assignment Agreements, the Prosecution History Files, the
Docket, and copies of all files and original documents owned or controlled by
Licensor, which include publicly available documents (including, without
limitation, Assignment Agreements, copies of Letters Patent, and other documents
necessary to establish that Licensor’s representations and warranties in Section
6 are true and correct) relating to the Patents and/or the Abandoned Assets
(“Initial
Deliverables”). Licensor
acknowledges and agrees that Licensee may request, and Licensor will promptly
deliver, additional documents based on Licensee’s review of the Initial
Deliverables (such additional documents, related information and the Initial
Deliverables, collectively, the “Deliverables”) and
the Deliverables, and that as a result of Licensee’s review, the listing of
assets in Exhibits A
and B, and
the list of Abandoned Assets on Exhibit C, may be revised
before and after the Closing to conform these lists to the definition of Patents
(and these revisions may require the inclusion of additional provisional patent
applications, patent applications, and patents on Exhibits A and B or
both). To the extent the listing of assets on Exhibits A and B is reduced, the amount
payable under paragraph 2.1 and the Royalty Percentage may be reduced by the
mutual agreement of the parties. Licensor shall not be obligated to
provide any attorney client confidential information or attorney work
product.
3.2 Closing
Licensor
and Licensee will use reasonable efforts to complete the review of the
Deliverables and satisfy the conditions to closing described in paragraph 3.3
within thirty (30) calendar days following the later of the Effective Date or
the date the last of the Deliverables was received by
Licensee. Licensee will thereafter pay Licensor the Upfront Royalty
Payment on the closing (the “Closing”), and
Licensee may then record Memoranda of Exclusive License/Rights.
3.3
Closing
Conditions
The
Closing will occur when Licensee determines that all the following conditions
have been satisfied or waived:
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(a)
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Signature by
Licensor. Licensor timely executed this Agreement and
delivered a Transmitted Copy of this Agreement to Licensee’s
representatives by not later than May 26, 2009 at 5:00 p.m., Mountain
Daylight Time and promptly delivered one (1) executed original of this
Agreement to Licensee’s
representatives.
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(b)
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Transmittal of
Documents. Licensor will have delivered to Licensee all
the Deliverables.
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(c) Compliance With
Agreement. Licensor performed and complied in all respects
with all of the obligations under this Agreement that are to be performed or
complied with by it on or prior to the Closing.
(d) Representations and
Warranties True. Licensee is satisfied that, as of the
Effective Date and as of the Closing, the representations and warranties of
Licensor contained in Section 6 are true and correct.
(e) Patents Not
Abandoned. Licensee is satisfied that, as of the Effective
Date and as of the Closing, none of the assets that are included in the Patents
have expired, lapsed, been abandoned, or deemed withdrawn.
(f) Delivery of Executed
Memorandum. Licensor will have delivered to Licensee executed
and notarized Memoranda of Exclusive License/Rights.
The
preceding conditions are conditions precedent to the Closing and to Licensee’s
obligation to make the payments contemplated pursuant to this
Agreement.
3.4 Further
Cooperation
At the
reasonable request of Licensee, Licensor will execute and deliver such other
instruments and do and perform such other acts and things as may be reasonably
necessary for effecting completely the consummation of the transactions
contemplated hereby, including, without limitation, execution, acknowledgment
and recordation of other such papers, and using reasonable efforts to obtain the
same from the respective inventors, as necessary for fully perfecting and
conveying unto Licensee the benefit of the transactions contemplated hereby,
including, without limitation, providing and assisting in obtaining execution of
any assignments, confirmations, powers of attorney, inventor declarations, and
other documents that Licensee may request for prosecuting, maintaining, filing,
obtaining issuance of, registering, enforcing, defending, or bringing any
proceeding relating to the Patents. To the extent any attorney-client
privilege or the attorney work-product doctrine applies to any portion of the
Prosecution History Files, Licensor will ensure that, if any such portion of the
Prosecution History File remains under Licensor’s possession or control after
the Closing, it is not disclosed to any third party unless (a) disclosure is
ordered by a court of competent jurisdiction, after all appropriate appeals to
prevent disclosure have been exhausted, and (b) Licensor gave Licensee prompt
notice upon learning that any third party sought or intended to seek a court
order requiring the disclosure of any such portion of the Prosecution History
File. In addition, Licensor will continue to prosecute, maintain, and
defend the Patents at its sole expense until the Closing.
4.
Filing, Prosecution and
Maintenance of Patent Rights
4.1 Costs
After the
Closing, Licensee will be solely entitled and responsible for the preparation,
filing, prosecution, maintenance and defense of all Patents (except to the
extent of any portion of the Patents abandoned pursuant to the terms of this
Agreement). Licensee may, but is not obliged to consult with Licensor
regarding execution of its responsibility.
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4.2 Copies
of Prosecution Documents
Licensee
will, upon Licensor’s reasonable written request, provide Licensor with a copy
of documents received or filed by Licensee pertaining to the filing,
prosecution, maintenance or defense of Patents, including, without limitation,
each patent application, office action, response to office action, request for
terminal disclaimer, and request for reissue or reexamination of any patent
issuing from such patent application.
4.3 Conduct
of Prosecution
Licensor
will execute and deliver to Licensee one or more memoranda in the form of the
Memoranda of Exclusive License/Rights and will execute at least one such
memorandum prior to the Closing. The conduct of the preparation, filing,
prosecution, maintenance, and defense of the Patents will be under Licensee’s
exclusive control and discretion. Licensee will consult with Licensor
on such matters from time to time on Licensor’s reasonable
request. At the reasonable request of Licensee, Licensor will execute
and deliver to Licensee such other instruments, and do and perform such other
acts and things, as may be reasonably necessary or desirable for confirming in
Licensee exclusive right to prosecute, maintain, defend, file, obtain issuance,
register, enforce, defend, or bring any proceeding relating to the Patents
including, without limitation, execution, acknowledgment and recordation of such
papers necessary to convey to Licensee any right or power of attorney in the
USPTO or other governmental patent office, in respect to prosecution,
maintenance, defense, filing, issuance, or registration of the
Patents.
4.4 Abandonment
of License to Patents
Licensee
will at any time be entitled to abandon its license and other rights to all or
any part of the Patents by providing at least thirty (30) days’ advance written
notice of such intention to Licensor; provided, Licensee will give such notice
not less than sixty (60) days prior to the last allowable date for filing or
taking any other action required with respect to such portion of the
Patents. From and after providing such notice of abandonment,
Licensee will have no further obligation with respect to such abandoned portion
of the Patents. Any sublicense granted with respect to any Patents
abandoned hereunder will not be terminated or altered as a result of such
abandonment, provided that such sublicense was granted prior to the
effectiveness of such abandonment.
4.5 Licensor’s
Assistance
Licensor
will provide Licensee with such advice and assistance as Licensee will
reasonably request in connection with the filing, prosecution, maintenance, or
defense of the Patents. Licensee will not be responsible for any
costs incurred by Licensor without Licensee’s prior written agreement to bear
such costs.
5.
Enforcement of Patents
5.1 Enforcement
Licensee will have the exclusive right,
but not the obligation, to institute, prosecute, and control any action or
proceeding with respect to infringement of the Patents, using counsel of its
choice, including any declaratory judgment action arising from such
infringement. In the event Licensee exercises its right to commence
such action or proceeding, Licensee will use reasonable efforts to advise
Licensor prior to such commencement. Thereafter, on Licensor's
written request no more frequently than every two (2) months, Licensee will
report to Licensor reasonable, nonprivileged information on the status of the
action or proceeding commenced by Licensee. Licensor does not have
and/or retain any right to, and will not, institute any case, action or other
enforcement proceeding with respect to infringement of the
Patents.
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5.2 Joinder;
Cooperation in Litigation
This
Agreement transfers to Licensee all substantial rights under the Patents and, as
a result, Licensee has the right to bring any future action or proceeding to
enforce claims under the Patents in its own name, without naming Licensor as a
party thereto. However, if necessary or desirable in Licensee's sole
discretion, Licensee may name Licensor as a party in any action or proceeding to
enforce the Patents. If Licensee finds it necessary or desirable,
Licensor will execute all papers or perform any other acts or provide any
assistance, at Licensee's expense, toward pursuing such action or proceeding, as
reasonably required by Licensee. Licensor will use its best efforts
to ensure that any Licensor personnel will be available to cooperate, at
Licensee's expense, toward pursuing such action.
5.3 Damages
for Breach
In the
event of a material breach of this Agreement by Licensee, subject to the terms
and conditions of this Agreement, Licensor may seek exclusively money damages
pursuant to the terms and conditions of this Agreement. In no event,
however, will Licensor be entitled to take any action or direct any proceeding
with respect to the Patents without Licensee’s express consent and direction
unless and until there has been a termination of the Term because of Licensee's
proven, continuing and uncured breach.
6.
Representations and Warranties of
Licensor
Licensor
represents and warrants to Licensee as of the Effective Date and as of the
Closing:
6.1 All
Substantial Rights
Licensor
intends by this Agreement to transfer to Licensee all substantial rights under
the Patents.
6.2 Authority
Licensor
has the full power and authority and has obtained all third party consents,
approvals, and/or authorizations required to enter into this Agreement and to
carry out its obligations hereunder, including, without limitation, the
assignment to Licensee of all causes of action with respect to the
Patents.
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6.3 Title
and Contest
Licensor
owns, and as of the Closing Licensee will hold, all right, title and interest to
each right conferred under this Agreement with respect to the Patents,
including, without limitation, all rights, title, and interest in and to the
causes of action assigned by this Agreement. Licensor has obtained
and properly recorded previously executed assignments for the Patents as
necessary to fully perfect its rights and title therein in accordance with
governing law and regulation in each jurisdiction. Each right
conferred under this Agreement with respect to the Patents is free and clear of
all liens, mortgages, security interests, and restrictions on
transfer. There are no actions, suits, investigations, claims, or
proceedings threatened, pending or in progress relating in any way to any right
conferred under this Agreement with respect to the Patents. There are
no existing contracts, agreements, options, commitments, proposals, bids,
offers, or rights with, to or in any Person to acquire any Patents.
6.4 Existing
Licenses and Restrictions on Rights
No
rights, interests, or licenses have been granted under any Patents or retained
by prior owners or inventors. Licensee will not be subject to any
covenant not to xxx or similar restrictions on its enforcement or enjoyment of
any of Patents or the related causes of action as a result of the transactions
contemplated in this Agreement or any prior transaction related to the Patents
or the Abandoned Assets.
6.5 Validity
and Enforceability
None of
the Patents or the Abandoned Assets (other than Abandoned Assets for which
abandonment resulted solely from unpaid fees and/or annuities) has been found
invalid, unpatentable, or unenforceable for any reason in any administrative,
arbitration, judicial or other proceeding; and Licensor does not know, has not
received any notice or claim from any source suggesting that, the Patents are
invalid, unpatentable, or unenforceable. To the extent “small entity”
fees were paid to the United States Patent and Trademark Office for any of the
Patents, such reduced fees were then appropriate because the payor qualified to
pay “small entity” fees at the time of such payment and specifically had not
licensed rights in the any of the Patents to an entity that was not a “small
entity.”
6.6 Conduct
Licensor
and its representatives have not engaged in any conduct, or omitted to perform
any necessary act, the result of which would invalidate any of the Patents or
hinder its enforcement, including, without limitation, misrepresenting
Licensor’s patent rights to a standard-setting organization.
6.7 Enforcement
Licensor
has not (a) put a third party on notice of actual or potential infringement of
any of the Patents or the Abandoned Assets or (b) initiated enforcement
action(s) with respect to any of the Patents or the Abandoned
Assets.
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6.8 Patent
Office Proceedings
None of
the Patents or the Abandoned Assets has been or is currently involved in any
re-examination, reissue, interference proceeding, or any similar proceeding, and
no such proceedings are pending or threatened.
6.9 Fees
All
maintenance fees, annuities and the like due or payable on each of the Patents
have been timely paid. For the avoidance of doubt, Licensor shall pay
any maintenance fees for which the fee is payable (e.g., the fee payment window
opens) on or prior to the Closing even if the surcharge date or final deadline
for payment of such fee would be after the Closing.
6.10 Abandoned
Patents
According
to each applicable patent office, each of the Abandoned Assets has expired,
lapsed, or been abandoned or deemed withdrawn.
7.
Representations and Warranties of Licensee
Licensee
represents and warrants to Licensor as of the Effective Date and the
Closing:
7.1 Authority
Licensee
is duly organized and validly existing under the laws of the jurisdiction of its
formation and has full power and authority to enter into this Agreement and to
carry out the provisions hereof.
7.2 Due
Authorization
Licensee
is duly authorized to execute and deliver this Agreement and to perform its
obligations hereunder. The individual executing this Agreement on
Licensee’s behalf has been duly authorized to do so by all requisite corporate
action.
8.
Disclaimer of Representations and Warranties;
Limitation of Liability; Exclusions From Damages
8.1 Disclaimer
of Representations and Warranties
NEITHER
PARTY MAKES ANY REPRESENTATION OR WARRANTY EXCEPT FOR THEIR RESPECTIVE
REPRESENTATIONS AND WARRANTIES SET FORTH IN SECTIONS 6 AND 7, AND EACH PARTY
DISCLAIMS ALL IMPLIED WARRANTIES, INCLUDING, WITHOUT LIMITATION, THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE. LICENSEE GIVES LICENSOR NO ASSURANCE THAT ANY ROYALTIES WILL
BE GENERATED FOR LICENSOR OR THAT ANY ROYALTIES WILL BE PAYABLE TO
LICENSOR. EXCEPT AS EXPRESSLY SET FORTH IN SECTION 6, LICENSOR GIVES
LICENSEE NO ASSURANCE (A) REGARDING THE PATENTABILITY OF ANY CLAIMED INVENTION
IN, OR THE VALIDITY, OF ANY PATENT; OR (B) THAT LICENSEE’S OR ITS
SUBLICENSEES’ MANUFACTURE, USE, SALE, OFFERING FOR SALE, IMPORTATION,
EXPORTATION OR OTHER DISTRIBUTION OF ANY PRODUCT OR METHOD DISCLOSED AND CLAIMED
IN ANY PATENT BY LICENSEE OR ANY SUBLICENSEE OR ANYONE ELSE WILL NOT CONSTITUTE
AN INFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OF OTHERS.
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8.2 Limitation
of Liability
EXCEPT IN
THE EVENT OF BREACH OF ANY OF THE PRIMARY WARRANTIES BY LICENSOR OR LICENSOR’S
INTENTIONAL MISREPRESENTATION, NEITHER PARTY’S TOTAL LIABILITY UNDER THIS
AGREEMENT WILL EXCEED THE PAYMENT AMOUNT SET FORTH IN PARAGRAPH
2.1. THE PARTIES ACKNOWLEDGE THAT THE FOREGOING LIMITATION ON
POTENTIAL LIABILITY WAS AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS
AGREEMENT.
8.3 Exclusion
of Certain Damages
NEITHER
PARTY WILL HAVE ANY OBLIGATION OR LIABILITY (WHETHER IN CONTRACT, WARRANTY, TORT
(INCLUDING NEGLIGENCE) OR OTHERWISE, AND NOTWITHSTANDING ANY FAULT, NEGLIGENCE
(WHETHER ACTIVE, PASSIVE OR IMPUTED), REPRESENTATION, STRICT LIABILITY OR
PRODUCT LIABILITY), FOR COVER OR FOR ANY INCIDENTAL, INDIRECT OR CONSEQUENTIAL,
MULTIPLIED, PUNITIVE, SPECIAL, OR EXEMPLARY DAMAGES OR LOSS OF REVENUE, PROFIT,
SAVINGS OR BUSINESS ARISING FROM OR OTHERWISE RELATED TO THIS AGREEMENT, EVEN IF
A PARTY OR ITS REPRESENTATIVES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES. LICENSOR UNDERSTANDS AND CONFIRMS THAT THERE MAY NOT BE ANY
ROYALTIES PAID UNDER THIS AGREEMENT. THE
PARTIES ACKNOWLEDGE THAT THESE EXCLUSIONS OF POTENTIAL DAMAGES WERE AN ESSENTIAL
ELEMENT IN SETTING CONSIDERATION UNDER THIS AGREEMENT.
8.4. Compliance with
Laws
Notwithstanding
anything contained in this Agreement to the contrary, the obligations of the
parties with respect to the consummation of the transactions contemplated by
this Agreement shall be subject to all laws, present and future, of any
government having jurisdiction over the parties and this transaction, and to
orders, regulations, directions or requests of any such
government.
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8.5 Confidentiality
of Terms
The
parties hereto will keep the terms and existence of this Agreement and the
identities of the parties hereto and their affiliates confidential and will not
now or hereafter divulge any of this information to any third party except
(a) with the prior written consent of the other party; (b) as otherwise may
be required by law or legal process, including, without limitation, in
confidence to legal and financial advisors in their capacity of advising a party
in such matters; (c) during the course of litigation, so long as the
disclosure of such terms and conditions is restricted in the same manner as is
the confidential information of other litigating parties; (d) in confidence
to its legal counsel, accountants, banks and financing sources and their
advisors solely in connection with complying with its obligations under this
Agreement; (e) by Licensee, in order to perfect Licensee’s interest in the
Patents or the Abandoned Assets with any governmental patent office (including,
without limitation, recording Memoranda of Exclusive License/Rights in any
governmental patent office); or (f) to enforce Licensee’s rights and interest in
the Patents, the causes of action transferred under this Agreement, or the
Abandoned Assets; provided, in (b) through (d) above, (i) to the extent
permitted by law, the disclosing party will use all legitimate and legal means
available to minimize the disclosure to third parties, including, without
limitation, seeking a confidential treatment request or protective order
whenever appropriate or available; and (ii) the disclosing party will provide
the other party with at least ten (10) days’ prior written notice of such
disclosure. Without limiting the foregoing, Licensor will cause its
agents involved in this transaction to abide by the terms of this paragraph,
including, without limitation, ensuring that such agents do not disclose or
otherwise publicize the existence of this transaction with actual or potential
clients in marketing materials or industry conferences. In the event
of any breach or default, threatened or otherwise, under this paragraph, the
parties acknowledge and agree that damages alone would be insufficient to
compensate for any such breach or default and that irreparable harm would result
from such breach or default. Consequently, in the event of any such
breach or default, or any threat of such breach or default by either party, the
other party will be entitled to temporary or permanent injunctive relief,
specific performance and such other equitable relief as may be appropriate in
the circumstances in order to restrain or enjoin such breach or
default. These remedies will not be the exclusive remedies for
violation of the terms of the confidentiality obligations contained in this
paragraph but will be in addition to all other remedies available to the parties
at law or in equity.
9.
Definitions
Capitalized
terms used in this Agreement that are not otherwise defined have the meanings
set forth in this Section.
“Abandoned
Assets” means those specific provisional patent applications, patent
applications, patents and other governmental grants or issuances, if any, listed
on Exhibit C (as such list may be updated based on Licensee’s review
pursuant to paragraph 3.1).
“Affiliate”
means, with respect to any Person, any Entity in whatever country organized that
controls, is controlled by or is under common control with such
Person. The term “control” means possession, direct or indirect, of
the power to direct or cause the direction of the management and policies of an
Entity, whether through the ownership of voting securities, by contract or
otherwise.
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“Amounts” as generally used in this
Agreement refers to cash amounts, and amounts that are not cash will be valued
by Licensee at their cash equivalent under customary valuation
techniques.
“Assignment
Agreements” means the agreements assigning to Licensor ownership of the
Patents and the Abandoned Assets from the inventors and/or any prior owners to
Licensor.
“Closing”
has the meaning set forth in paragraph 3.2.
“Effective
Date” means the date set forth as the Effective Date on the cover page of
this Agreement.
“Entity”
means any corporation, partnership, limited liability company, association,
joint stock company, trust, joint venture, unincorporated organization,
governmental entity (or any department, agency, or political subdivision
thereof) or any other legal entity.
“Licensed Products” means any
product sold by Licensee which would otherwise infringe one or more claims of a
Patent.
“Memoranda of
Exclusive License/Rights” means one or more documents in substantially
the form of Exhibit B,
which form may be adjusted for the requirements of the particular government
patent office, that memorialize the license and other rights transferred to
Licensee by this Agreement
“Net Sales Revenues” means the
gross sales revenue minus product returns for credit, discounts, rebates or
similar price adjustments or credits, freight and insurance charges, value added
taxes, sales taxes and/or similar taxes and duties for all Licensed
Products.
“Patent” or “Patents” means (a) all patents
listed in Exhibit A and
the inventions therein described {the “Inventions”); (b) the entire
right, title and interest in said Invention in the listed patents and any
related patent applications, and in all divisionals, continuations and
continuations-in-part of the applications, or reissues or extensions of Letters
Patent or patents granted thereon, and in all corresponding applications filed
in any and all jurisdictions and/or countries foreign to the United States, and
in all patents issuing thereon in the United States and/or foreign jurisdictions
or countries; (c) the entire right, title and interest to any and all developed
ideas, trade secrets, confidential information, and copyrightable matter
directly related to said Invention; and (d) all extensions, modifications, new
developments, improvements, supplements, technical data, scientific know-how,
and all other property, legal, equitable, and contractual rights directly and
indirectly relating to said Invention, whether now existing or hereafter
arising..
“Person”
means any individual or Entity.
“Primary
Warranties” means, collectively, the representations and warranties of
Licensor set forth in paragraphs 6.1, 6.2, 6.3, 6.4, and 6.5
hereof.
“Prosecution
History Files” means the names, addresses, email addresses, and phone
numbers of prosecution counsel and agents, and all files, documents and tangible
things, as those terms have been interpreted pursuant to rules and laws
governing the production of documents and things, constituting, comprising or
relating to the investigation, evaluation, preparation, prosecution,
maintenance, defense, filing, issuance, registration, assertion or enforcement
of the Patents.
“Reporting
Period” has the
meaning set forth in paragraph 2.3.
-12-
“Royalties” has the meaning set forth
in paragraph 2.2
“Royalty
Percentage”
means the percentage set forth on the cover page of this Agreement.
“Transmitted
Copy” has the meaning set forth in paragraph 10.14.
“Upfront Royalty
Payment” has the meaning set forth in paragraph 2.1.
10. Miscellaneous
10.1 Indemnification
Licensee
shall defend (with legal counsel selected and retained by Licensee and approved
by Licensor, which approval shall not be unreasonably withheld), indemnify and
hold harmless Licensor, its governors, regents, directors, officers, employees,
agents and their respective successors, assigns and heirs (“Indemnitees”) against
any and all claims, suits and legal actions by any third party (“Claims”), based upon
any theory of liability (including, without limitation, warranty, strict
liability or tort, and regardless of any factual basis), arising out of the
exercise of any rights under this Agreement to the Patents by Licensee or any of
its Affiliates, successors or assigns, or by any sublicensee of Licensee, all
subject to the following:
|
(a)
|
Indemnitees
shall give Licensee written notice of the Claim which any Indemnitee
desires Licensee to defend, indemnify and hold harmless under this
Agreement promptly after any Indemnitee receive notice thereof along with
sufficient information for Licensee to identify the
Claim. Indemnitees shall not settle or compromise any such
Claim without the prior written consent of
Licensee. Indemnitees shall cooperate and provide such
assistance (including, without limitation, testimony and access to
documentation within the possession or control of any Indemnitee) as
Licensee may reasonably request in connection with Licensee's defense,
settlement and satisfaction of the Claim; provided that Licensee shall pay
or reimburse all of the costs and expenses reasonably incurred by
Indemnitees to provide any such cooperation and assistance in accordance
with Licensee's request.
|
|
(b)
|
As
part of Licensee's obligation to defend, indemnify and hold harmless
Indemnitees, Licensee shall pay any and all (i) costs and expenses
reasonably incurred by Licensee in connection with the defense, settlement
or satisfaction of any Claim (including, without limitation, any amounts
agreed to by Licensee in settlement of the Claim) and (ii) amounts
required by any judgment or order of any court to be paid by Indemnitees
as damages or other relief based upon the Claim; provided that Indemnitees
have complied with their obligations under (a) above with respect to the
Claim.
|
|
(c)
|
Licensee
shall not be obligated to defend, indemnify or hold harmless any
Indemnitee against any Claim or related costs and expenses, if and to the
extent the Claim arises out of any breach of this Agreement by Licensor
(including, without limitation, any breach of Licensor's representations
and warranties set forth in Section
6).
|
|
(d)
|
Licensee
shall be entitled to a credit against future royalties or other amounts
payable by Licensee to Licensor under this Agreement in an amount equal to
any out-of-pocket amounts expended by Licensee in the specific defense of
claims levied against Licensor, or Licensee where Licensor is a named
party in the claim, by the
claimant.
|
-13-
Except
as specifically provided in (a) and (b) above, Licensee shall not have any
obligation to pay or reimburse any costs or expenses (including, without
limitation, any fees or expenses of any legal counsel retained by any
Indemnitee), unless otherwise agreed in writing by Licensee.
10.2 Relationship
of Parties
The
parties hereto are independent contractors. Nothing in this Agreement
will be construed to create a partnership, joint venture, franchise, fiduciary,
employment or agency relationship between the parties. Neither party
has any express or implied authority to assume or create any obligations on
behalf of the other or to bind the other to any contract, agreement or
undertaking with any third party.
10.3 Assignment;
Successors
The terms
and conditions of this Agreement will inure to the benefit of Licensee, its
successors, assigns and other legal representatives, and will be binding upon
Licensor, its successors, assigns, and other legal
representatives. Without Licensor’s consent, Licensee may assign, in
whole or in part, this Agreement, and/or any license or other rights Licensee
acquires hereunder, to its Affiliates. Licensor will not unreasonably
withhold or delay its consent to any other assignment requested by Licensee of
this Agreement, in whole or in part, or of any license or other rights Licensee
acquires hereunder.
10.4 Term
and Termination
The term
of this Agreement (the “Term”) will commence
on the Effective Date and will continue in effect until the last of the Patents
expires, or such longer time as may be necessary, as determined at Licensee’s
sole and absolute discretion, to permit Licensee to fully enforce and protect
its rights under the Patents for any action or proceeding for infringement
arising before such expiration. Subject to the provisions of
paragraph 10.10, in the event of a material breach of this Agreement, the
non-breaching party will be entitled to terminate the Term by written notice to
the breaching party, if such breach is not cured within ten (10) business days
(for monetary defaults) and sixty (60) days (for non-monetary defaults) after
written notice specifying the breach is given to the breaching
party.
10.5 Survival/Effect
of Termination
No
termination of the Term will relieve a breaching party of its obligations
arising prior to such termination.
10.6 Export
Controls
It is
understood and agreed that to the extent Licensor is subject to United States
laws and regulations controlling the export of technical data, computer
software, laboratory prototypes, and other commodities (including the Arms
Export Control Act, as amended, and the Export Administration Act of 1979), and
that its obligations hereunder are contingent on compliance with applicable
United States export laws and regulations. The transfer of certain
technical data and commodities may require a license from the cognizant agency
of the United States Government and/or written assurances by Licensee that
Licensee will not export data or commodities to certain foreign countries
without prior approval of such agency. Licensor neither represents
that a license will not be required nor that, if required, it will be
issued.
-14-
10.7 Governing
Law
Any claim
arising under or relating to this Agreement will be governed by the laws of the
State of Utah, without regard to choice of law principles to the
contrary.
10.8 Dispute
Resolution
Except as
provided under paragraph 8.5, the parties hereby waive their respective rights
to seek remedies in court, and will resolve any and all claims, disputes, or controversies
relating in any way to, or arising out of, this Agreement, including, without
limitation, any breach or threatened breach of this Agreement, the amount of
Royalties due under this Agreement, or the
calculation of Net Sales
Revenue (“Disputes”), as follows:
(a) The
party raising the Dispute shall promptly provide the other party with a written
notice describing the nature of the Dispute in reasonable detail (a “Dispute
Notice”). During the thirty (30) day period after a party’s receipt
of a Dispute Notice, the parties will commence discussions to attempt to resolve
the Dispute.
(b) If
the parties cannot timely resolve the Dispute through negotiation, before
resorting to arbitration the parties will try in good faith to settle the
Dispute by mediation before a mutually agreed mediator in Utah. The
mediation will be conducted in English and administered by the American
Arbitration Association (“AAA”) under its
Commercial Mediation Procedures. If the parties are unable to agree
upon a mutually acceptable mediator, the AAA will appoint a qualified
mediator. The mediation proceeding shall take place on the earliest
practicable date following the submission of a request for mediation by either
party, which request shall be submitted within sixty (60) days after a party’s
receipt of a Dispute Notice.
(c) If
the Dispute is not resolved through mediation within thirty (30) days after the
mediation hearing, the parties will submit the Dispute to final and binding
arbitration administered by the AAA under its Commercial Arbitration
Rules. The arbitrator may enter a default decision against any party
who fails to participate in the arbitration proceedings.
(i) The
arbitration will be conducted before a mutually agreed panel of three neutral
(3) arbitrators in Utah. If the parties are unable to agree upon a
mutually acceptable panel of three (3) arbitrators, the panel will be selected
by the AAA.
(ii) The
arbitration hearing will be conducted in English, and under no circumstances
will the arbitration hearing extend for more than one (1) business
day. The award shall be rendered within one hundred twenty (120) days
of the demand and the arbitrators shall agree to comply with this schedule
before accepting appointment. The parties have included these time
limits to expedite the proceeding, but they are not jurisdictional, and the
arbitrator may for good cause permit reasonable extensions which shall not
affect the validity of the award.
-15-
(iii) All
documents and information relevant to the Dispute in the possession of any party
shall be made available to the other party not later than sixty (60) days after
the demand for arbitration is served, and the arbitrator may permit such
depositions or other discovery deemed necessary for a fair hearing.
(iv) The
parties agree that the arbitration method to be employed by the parties will be
"baseball arbitration," in which case each party will submit to the arbitrators
and exchange with each other in advance of the hearing their last, best offers
and the arbitrators will be limited to awarding only one or the other of the two
figures submitted.
(v) The
arbitrators’ award may be entered and enforced in any court with competent
jurisdiction and will be nonappealable. Such decision may be used in
a court of law only for the purpose of seeking enforcement of the arbitrator's
decision permitted under this Agreement.
(vi) The
costs of the arbitration proceeding, including reasonable attorneys’ fees and
costs, will be determined by the arbitrators, who may apportion costs equally,
or in accordance with any finding of fault or lack of good faith of either
party.
(vii) To
the fullest extent permitted by law, no arbitration under this Agreement shall
be joined to any other arbitration, and no class arbitration proceedings shall
be permitted.
(viii) Except
as may be required by law, neither a party nor any arbitrator may disclose the
existence, content, or results of any arbitration hereunder without the prior
written consent of both parties.
Notwithstanding
the foregoing, nothing in this paragraph 10.8 will be construed to waive any
rights of timely performance of any obligations existing under this Agreement
through the Closing.
10.9 Notices
and Payment Delivery
All
notices required or permitted to be given hereunder will be in writing, will
make reference to this Agreement and will be delivered by hand, or dispatched by
prepaid air courier or by registered or certified airmail, postage prepaid, to
the addresses set forth on the cover page of this Agreement. Such
notices will be deemed served when received by addressee or, if delivery is not
accomplished by reason of some fault of the addressee, when tendered for
delivery. Either party may give written notice of a change of address
to the other. After notice of such change has been received, any
notice or request will thereafter be given to such party at such changed
address.
-16-
10.10 Remedies
Licensor's
sole and exclusive remedy in the event of any claim, dispute, or controversy
under this Agreement will be the recovery of money damages, subject to the
disclaimer and limitations set forth in this Agreement, including, without
limitation, those in paragraphs 8.1 through 8.3.
10.11 Severability
If any
provision of this Agreement is found to be invalid or unenforceable, then the
remainder of this Agreement will have full force and effect, and the invalid
provision will be modified, or partially enforced, to the maximum extent
permitted to effectuate the original objective.
10.12 Waiver
Failure
by either party to enforce any term of this Agreement will not be deemed a
waiver of future enforcement of that or any other term in this Agreement or any
other agreement that may be in place between the parties.
10.13 Miscellaneous
This
Agreement, including its exhibits, constitutes the entire agreement between the
parties with respect to the subject matter hereof and merges and supersedes all
prior and contemporaneous agreements, understandings, negotiations, and
discussions. Neither of the parties will be bound by any conditions,
definitions, warranties, understandings, or representations with respect to the
subject matter hereof other than as expressly provided herein. The
section headings contained in this Agreement are for reference purposes only and
will not affect in any way the meaning or interpretation of this
Agreement. No oral explanation or oral information by either party
hereto will alter the meaning or interpretation of this Agreement. No
amendments or modifications will be effective unless in a writing signed by
authorized representatives of both parties; provided, however, that, both prior
to and after the Closing, Licensee may update Exhibits A
and B to
include any patents or patent applications within the definition of Patents,
based on its review of the Deliverables as defined in paragraph 3.1, by
providing updated Exhibits A and
B to Licensor. The terms and conditions of this Agreement will
prevail notwithstanding any different, conflicting or additional terms and
conditions that may appear on any letter, email or other communication or other
writing not expressly incorporated into this Agreement. The following
exhibits are attached hereto and incorporated herein: Exhibit A
(entitled “Patents
Being Licensed”); Exhibit B
(entitled “Memorandum
of Exclusive License/Rights”); and Exhibit D
(entitled “Transfer of
Rights in Certain Assets”).
-17-
10.14 Counterparts;
Electronic Signature
This
Agreement may be executed in counterparts, each of which will be deemed an
original, and all of which together constitute one and the same
instrument. Each party will execute and promptly deliver to the other
parties a copy of this Agreement bearing the original
signature. Prior to such delivery, in order to expedite the process
of entering into this Agreement, the parties acknowledge that a Transmitted Copy
of this Agreement will be deemed an original document. “Transmitted Copy”
means a copy bearing a signature of a party that is reproduced or transmitted
via email of a .pdf file, photocopy, facsimile, or other process of complete and
accurate reproduction and transmission.
[Remainder
of Page Intentionally Left Blank.]
-18-
EXHIBIT
A
PATENTS BEING
LICENSED
|
Patent
or
Application
No.
|
Country
|
Issue
Date
|
Title of
Patent
|
|
6,044,257
|
United
States
|
March
28, 2000
|
Panic
Button Phone
|
|
6,636,732
|
United
States
|
October
21, 2003
|
Emergency
Phone with Single Button Activation
|
|
6,226,510
|
United
States
|
May
1, 2001
|
Emergency
Phone for Automatically Summoning Multiple Emergency Response
Services
|
|
7,092,695
|
United
States
|
August
15, 2006
|
Emergency
Phone with Alternate Number Calling Capability
|
|
7,251,471
|
United
States
|
July
31, 2007
|
Emergency
Phone with Single Button
Activation
|
-19-
EXHIBIT
B
MEMORANDUM OF EXCLUSIVE
LICENSE/RIGHTS
Futuristic
Medical Devices, LLC, a Delaware limited liability company having offices at 00
Xxxxxxx Xxxxxx, Xxxxxx, Xxx Xxxx 00000, (“Licensor”), has granted to Volu-Sol Reagents
Corporation, a Utah corporation, having an office at 0000 Xxxx
0000 Xxxxx, Xxxx Xxxxxx Xxxx, Xxxx 00000 (“Licensee”), the exclusive, worldwide,
transferable, sublicensable, license of all rights of any kind conferred by the
patents, patent applications, and provisional patent applications listed in the
table below:
|
Patent
or
Application
No.
|
Country
|
Issue
Date
|
Title of
Patent
|
|
6,044,257
|
United
States
|
March
28, 2000
|
Panic
Button Phone
|
|
6,636,732
|
United
States
|
October
21, 2003
|
Emergency
Phone with Single Button Activation
|
|
6,226,510
|
United
States
|
May
1, 2001
|
Emergency
Phone for Automatically Summoning Multiple Emergency Response
Services
|
|
7,092,695
|
United
States
|
August
15, 2006
|
Emergency
Phone with Alternate Number Calling Capability
|
|
7,251,471
|
United
States
|
July
31, 2007
|
Emergency
Phone with Single Button
Activation
|
including,
without limitation, the rights of any kind to, or conferred by, the Patents
(defined below) to (a) use or otherwise practice any art, methods,
processes, and procedures covered by the Patents, (b) make, have made, use,
offer to sell, sell, import, and otherwise distribute or dispose of any
inventions, discoveries, products, services, technologies or services covered by
the Patents, (c) otherwise exploit any rights granted in the Patents and/or
any invention or discovery described in the Patents, and (d) exclude other
Persons from exercising any of such rights.
The
“Patents” include all right, title, and interest that exist today and may exist
in the future in and to any and all of the following:
(a)
all patents listed in Exhibit A and the inventions therein described {the
“Inventions”);
(b) the
entire right, title and interest in said Invention in the listed patents and any
related patent applications, and in all divisionals, continuations and
continuations-in-part of the applications, or reissues or extensions of Letters
Patent or patents granted thereon, and in all corresponding applications filed
in any and all jurisdictions and/or countries foreign to the United States, and
in all patents issuing thereon in the United States and/or foreign jurisdictions
or countries;
-20-
(c) the
entire right, title and interest to any and all developed ideas, trade secrets,
confidential information, and copyrightable matter directly related to said
Invention; and
(d) all
extensions, modifications, new developments, improvements, supplements,
technical data, scientific know-how, and all other property, legal, equitable,
and contractual rights directly and indirectly relating to said Invention,
whether now existing or hereafter arising.
Licensor
has also assigned, transferred and conveyed to Licensee all right, title, and
interest in and to:
(x) rights
to apply in any or all countries of the world for patents, certificates of
invention, utility models, industrial design protections, design patent
protections, or other governmental grants or issuances of any type related to
any of the Patents and the inventions and discoveries therein;
(y) all
causes of action and enforcement rights of any kind (whether such claims, causes
of action or enforcement rights are known or unknown; currently pending, filed,
to be filed, or otherwise) under the Patents and/or under or on account of any
of the Patents for past, current and future infringement of the Patents,
including without limitation, all rights to (i) pursue and collect damages,
profits and awards of whatever nature recoverable, (ii) injunctive relief,
(iii) other remedies, and (iv) compromise and/or settle all such
claims, causes of action and enforcement rights, for such infringement by
granting an infringing party a sublicense or otherwise; and
(z) rights
to collect royalties or other payments under or on account of any of the Patents
or any of the foregoing.
The
preparation, filing, prosecution, maintenance and defense of the Patents will be
under Licensee’s exclusive control and discretion, in all pertinent governmental
patent offices anywhere in the world.
Licensor
hereby irrevocably grants Licensee the exclusive power to grant one or more
powers of attorney with respect to the Patents and the
exclusive discretion to transfer that right to Licensee's agent(s) or
representative(s) that Licensee may designate one or more time, now or in the
future. Licensor understands that execution of this document confers
on any attorney(s) or agent(s) to whom Licensee may grant a power of attorney
the exclusive right to correspond with any patent office with repect to the
Patents, and that this document does not create an attorney - client
relationship with such practitioners to whom Licensee grants powers of attorney
pursuant to this paragraph.
-21-
IN
WITNESS WHEREOF this Memorandum of Exclusive License/Rights is executed at
__________ on May 25, 2009.
|
LICENSOR:
FUTURISTIC
MEDICAL DEVICES, LLC
By: /s/ Xxxxx
Xxxxxxxx
Name: Xxxxx
Xxxxxxxx
Title: Manager
|
|
STATE
OF NEW YORK
|
)
|
|
)
ss.
|
|
|
COUNTY
OF KINGS
|
)
|
On May
25, 2009, before me, Xxxxx Xxxxx, Notary Public in and for said State,
personally appeared Xxxxx Xxxxxxxx, personally known to me (or proved to me on
the basis of satisfactory evidence) to be the person whose name is subscribed to
the within instrument and acknowledged to me that he/she executed the same in
his/her authorized capacity, and that by his/her signature on the instrument the
person, or the entity upon behalf of which the person acted, executed the
instrument.
WITNESS
my hand and official seal.
Signature /s/ Xxxxx
Xxxxx
[NOTARY SEAL]
-22-
EXHIBIT
C
ABANDONED
ASSETS
-23-
EXHIBIT
D
TRANSFER OF RIGHTS IN
CERTAIN ASSETS
-24-
