EXHIBIT 10.7
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PATENT AND TECHNOLOGY LICENSE AGREEMENT
This PATENT AND TECHNOLOGY LICENSE AGREEMENT (this "Agreement") is
made as of this 4th day of September 1998 by and between ACCUMED
INTERNATIONAL, INC., a Delaware corporation ("ACCUMED"), and INPATH, LLC, a
Delaware limited liability company ("LICENSEE").
WHEREAS, ACCUMED, by reason of an assignment from certain individual
inventors, has the right to grant patent licenses under certain "Patents"
(as defined in Section 1);
WHEREAS, ACCUMED owns certain "Technology" (as defined in Section 1)
comprised of, among other things, valuable trade secrets and know-how and,
accordingly, has the right to grant licenses under the same; and
WHEREAS, LICENSEE wishes to obtain a license under the Patents and
under the Technology upon and subject to the terms and conditions
hereinafter set forth.
NOW, THEREFORE, for valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, ACCUMED and LICENSEE hereby
agree as follows:
SECTION 1
DEFINITIONS
The following capitalized terms used in this Agreement shall have the
respective meanings ascribed to them below in this Section unless otherwise
expressly defined in this Agreement (such definitions shall be equally
applicable to both the singular and plural forms of the defined terms). The
words "hereof," "herein" and "hereunder" and words of like import when used
in this Agreement shall refer to this Agreement as a whole and not to any
particular provision of this Agreement, and Section references are to this
Agreement unless otherwise specified.
"ACCUMED" has the meaning set forth in the introductory paragraph of
this Agreement.
"Accumed Improvement" means any redesign, enhancement, or
modification, of the Licensed Products, whether or not patentable,
developed by ACCUMED or any third party on ACCUMED's behalf.
"Affiliated Person" means, (i) with respect to an individual, (a)
each other member of such individual's family; (b) any Person that is
directly or indirectly controlled by such individual or one or more members
of such individual's family; (c) any Person in which such individual or
members of such individual's family hold (individually or in the aggregate)
a Material Interest; and (d) any Person with respect to which such
individual or one or more members of such individual's family serves as a
director, officer, manager, partner, executor, or trustee (or in a similar
capacity); and (ii) with respect to a specified Person other than an
individual, (a) any Person that directly or indirectly controls, is
directly or indirectly controlled by, or is directly or indirectly under
common control with such specified Person; (b) any Person that holds a
Material Interest in such specified Person; (c) each Person that serves as
a director, officer, manager, partner, executor, or trustee of such
specified Person (or in a similar capacity); (d) any Person in which such
specified Person holds a Material Interest; (e) any Person with respect to
which such specified Person serves as a general partner or a trustee (or in
a similar capacity); and (f) any Affiliated Person of any individual
described in clause (b) or (c).
"ACCUMED's Protected Business" has the meaning set forth in Section
6.2.
"Claim" means a patent claim made in a pending patent application or
in an issued patent.
"Copyrighted Work" means ACCUMED's copyrighted works which relate to
the Patent Rights or Technology and which are delivered to and accepted by
LICENSEE pursuant to Section 2.7.
"Foreign Patents" means, collectively, the letters patent, if any,
covering Claims of the U.S. Patents which are applied for by ACCUMED or
issued to ACCUMED in a country other than the United States, subject to the
provisions of Section 5.1 governing the prosecution thereof.
"Guaranteed License Issue Fee" has the meaning set forth in Section
3. 1.
"Licensed Product" means any device, apparatus, instrument,
equipment, consumables, data, system, or component thereof, or method or
process or embodiments thereof which are covered by the LICENSEE Protected
Business or which are covered by the Claims of the Patents or the subject
matter of the Technology.
"LICENSEE" has the meaning set forth in the introductory paragraph of
this Agreement.
"LICENSEE Improvement" means any redesign, enhancement, or
modification, of the Licensed Products, whether or not patentable,
developed by LICENSEE or any third party on LICENSEE's behalf
"LICENSEE's Protected Business" has the meaning set forth in Section
6.2.
"Material Interest" means direct or indirect beneficial ownership of
voting securities or other voting interests representing more than 5% of
the outstanding voting power of a Person or equity securities or other
equity interests representing more than 5% of the outstanding equity
securities or equity interests in a Person.
"Minimum Guaranteed Payment" has the meaning set forth in Section
3.2.
"Non-Cancellation Period" has the meaning set forth in Section 9.3.
"Non-Competition Agreement" means that certain Non-Competition and
Confidentiality Agreement of even date herewith made by Xxxxx X. Xxxxxxxx
in favor of ACCUMED.
"Outside Country" has the meaning set forth in Section 5.1.
"Patents" means, collectively, the U.S. Patents and the Foreign
Patents.
"Person" means any individual, sole proprietorship, partnership,
joint venture, trust, unincorporated organization, association,
corporation, governmental authority, or any other entity.
"Proprietary Information" has the meaning set forth in Section 6.1.
"Related Party" means Xxxxx X. Xxxxxxxx or any other party to a
Related Party Agreement.
"Related Party Agreements" means, collectively, this Agreement, the
Settlement Agreement, the Non-Competition Agreement, and the other
agreements, documents, and instruments executed and delivered in connection
therewith.
"Required Royalty" has the meaning set forth in Section 3.2.
"Sales" means the gross amount of all sales, revenues, receipts,
cash, monies, fees, other amounts invoiced or collected by LICENSEE
(whether on its own or through its distributors or agents) in any currency
or denominations (whether in cash or by way of other benefit, advantage, or
concession (in which case the applicable revenue will be the monetary
equivalent or value of same)) from the manufacture, use, sale, offer to
sell, rental, lease or other transfer of any Licensed Product.
"SAMBA Transaction" has the meaning set forth in Section 6.2.
"Settlement Agreement" means that certain Settlement Agreement of
even date herewith among Xxxxx X. Xxxxxxxx, ACCUMED, and LICENSEE.
"Technology" means product designs, models, prototypes, schematics,
copyrighted works, know-how, technical information, and trade secrets
(including, without limitation, ideas, formulas, compositions, inventions
(whether patentable or unpatentable and whether or not reduced to
practice), manufacturing and production processes and techniques, research
and development information, drawings, blue prints, specifications,
designs, bills of material, computer software, and documentation), and
embodiments thereof (in whatever form or medium) of ACCUMED which directly
relate to "collection," "imaging," or "analysis" as defined in the next
sentence. For the purposes of this definition, (i) "collection" means
collection which involves the use of any apparatus, device, consumable,
method, or process that conveys a priori information in connection with the
specimen or sample collection process, whether or not used in conjunction
with any collection device capable of conveying a priori information, (ii)
"imaging" means imaging or optical sensing which involves the use of (a)
fluorescence, (b) spectral (including color, amplitude, or ratio
spectrometry) measurement from an imaging sensor, or (c) the detection of
abnormal tissue by the application of a chemical or pharmaceutical agent,
and (iii) "analysis" means analysis which involves any apparatus, device,
consumable, method, or process using "imaging" (as defined in clause (ii))
information to select tissue or patients in need of point-of-care follow-up
including therapy or if it involves any collection, sampling, screening, or
diagnosis based upon "imaging" (as defined in clause (ii)).
"Termination Default" has the meaning set forth in Section 8.1.
"Territory" means the United States and any other country throughout
the world.
"U.S. Patents" means (i) the Application for Letters Patent
identified as Case No. 96,242 titled "A Method and Apparatus for Imaging
and Sampling Diseased Tissue Using Autofluorescence" as filed under United
States Patent Application Serial No. 08/845,261 on April 23, 1997, (ii)
Case No. 96,242-A, which is a continuation in part thereof, as filed under
United States Patent Application Serial No. 08/951,018 on October 15, 1997,
(iii) the continuations, continuations-in-part or divisions thereof, (iv)
the letters patent issuing therefrom by the United States Patent and
Trademark Office, and (v) the extensions, renewals or reissues of such
letters patent.
SECTION 2
LICENSE OF PATENTS AND TECHNOLOGY
2.1 GRANT OF LICENSE IN PATENTS. ACCUMED hereby grants to LICENSEE,
and LICENSEE accepts from ACCUMED, an exclusive, non-transferable,
non-divisible license to make, have, made, use, offer to sell, and sell
Licensed Products covered by the Claims of the Patents throughout the
Territory on the terms and provisions hereof.
2.2 GRANT OF LICENSE IN TECHNOLOGY. ACCUMED hereby grants to
LICENSEE, and LICENSEE accepts from ACCUMED, an exclusive,
non-transferable, non-divisible license to make, have made, use, offer to
sell, and sell Licensed Products covered by the subject matter of the
Technology throughout the Territory on the terms and provisions hereof.
2.3 GRANT OF LICENSE IN COPYRIGHTS. ACCUMED hereby grants to
LICENSEE, and LICENSEE accepts from ACCUMED, an exclusive, nontransferable,
non-divisible license to use and copy the Copyrighted Works on the terms
and provisions hereof.
2.4 SCOPE OF GRANT. The licenses in the Patents, the Technology,
and the Copyrighted Works granted hereunder are not transferable (except as
expressly permitted by Section 10.8) and no right to sublicense is extended
by this Agreement. LICENSEE acknowledges that no license or right is hereby
granted by implication, estoppel, or otherwise, under any patent or patent
right, know-how, or trade secret not expressly identified in this
Agreement. LICENSEE shall not make, have made, use, offer to sell, sell, or
otherwise commercially exploit any Licensed Products outside the scope of
the licenses granted hereunder. ACCUMED reserves all rights not expressly
granted herein. The license in the Copyrighted Works granted hereunder
shall be coincident and coterminous with the licenses in the Patents and
the Technology hereunder. Without limiting the foregoing, the licenses
granted hereunder shall not be interpreted to limit or derogate ACCUMED's
right or ability to make, have made, use, offer to sell, sell, or to
otherwise commercially exploit for its own benefit the Patents, the
Technology, and the Copyrighted Works in any manner in connection with any
products, systems, or processes within the scope of the definition of, and
coincident to LICENSEE' s restrictions with respect to, "ACCUMED's
Protected Business" under and as defined in Section 6. 1.
2.5 IMPROVEMENTS. LICENSEE Improvements will be owned by LICENSEE.
ACCUMED Improvements will be owned by ACCUMED. LICENSEE hereby grants to
ACCUMED a non-exclusive license to use LICENSEE Improvements outside the
scope of the LICENSEE Protected Business, solely to the extent LICENSEE
shall have rights therein and coterminous with the licenses granted to
LICENSEE hereunder. ACCUMED Improvements shall be covered by the license
grants under this Agreement solely to the extent ACCUMED shall have rights
therein and solely to the extent necessary to enable LICENSEE to
manufacture, use, and sell Licensed Products in accordance with this
Agreement (e.g. if ACCUMED develops an ACCUMED Improvement and obtains a
patent thereon which would otherwise block LICENSEE's ability to
manufacture, use, and sell Licensed Products in accordance with this
Agreement, then the license grants hereunder shall include such patent,
whereas if such ACCUMED Improvement patent would not otherwise block
LICENSEE's rights hereunder, such ACCUMED Improvement patent will not be
covered by the license grants under this Agreement). Each party shall keep
the other party fully apprised of any improvements it may develop for the
Licensed Product and shall give the other party prompt written notice of
any of the same, which shall be given, in any event, not later than ten
(10) business days after such party becomes aware of the same.
2.6 DUTY TO MARKET. LICENSEE hereby covenants and agrees that
during the term of this Agreement it will use its best efforts to design,
develop, manufacture, sell, market, and support the Licensed Products.
2.7 DULY TO DELIVER DOCUMENTATION. ACCUMED shall at its sole cost
and expense, within forty-five (45) days after execution of this Agreement
by LICENSEE, deliver to LICENSEE a tangible and/or electronic copy of all
of ACCUMED's documentation of the Patents and the Technology.
SECTION 3
ROYALTIES, RECORDS, AND REPORTS
3.1 GUARANTEED LICENSE ISSUE FEE. LICENSEE shall pay ACCUMED a
guaranteed license issue fee equal to Five Hundred Thousand Dollars
($500,000) (the "Guaranteed License Issue Fee"), of which One Hundred
Thousand Dollars ($100,000) shall be payable by LICENSEE to ACCUMED on the
date hereof (and shall be a condition precedent to the effectiveness of the
license grants hereunder) and the remainder of which shall be payable in
quarterly installments in accordance with the following payment schedule:
One Hundred Thousand Dollars ($100,000) on December 4, 1998;
One Hundred Thousand Dollars ($100,000) on March 4, 1999;
One Hundred Thousand Dollars ($100,000) on June 4, 1999; and
One Hundred Thousand Dollars ($100,000) on September 4, 1999.
The Guaranteed License Issue Fee shall be deemed to be a license issue fee
and shall neither be (i) refundable nor (ii) (except as expressly provided
in paragraph (b) of Section 5.1, in Section 5.2, and in Section 5.3) in any
circumstance credited or recoupable against any of the Required Royalty
payments due ACCUMED under this Agreement.
3.2 REQUIRED ROYALTY; MINIMUM GUARANTEED PAYMENTS. For the rights
and privileges granted to LICENSEE under this Agreement, LICENSEE (subject
to paragraph (b) of Section 5.1, Section 5.2, and Section 5.3) shall pay to
ACCUMED from and after the date hereof until the licenses hereunder are
terminated in accordance with this Agreement, a royalty rate equal to seven
percent (7%) of all Sales of any Licensed Product (the "Required Royalty").
A product is considered subject to a Sale hereunder when invoiced or when
payment is collected, whichever shall occur first. Notwithstanding the
amount of any Sales or Required Royalty, LICENSEE shall pay ACCUMED the
minimum guaranteed payments in accordance with the schedule set forth below
(the "Minimum Guaranteed Payments"). The Minimum Guaranteed Payments paid
by LICENSEE to ACCUMED with respect to the royalty period from and after
the second (2nd) anniversary of this Agreement shall be credited and
recoupable against Required Royalty payments accruing hereunder with
respect to the same royalty period.
MINIMUM
ROYALTY GUARANTEED
PERIOD PAYMENTS MINIMUM INSTALLMENTS
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from the first $1,000,000 payable in installments
anniversary of of $500,000 each on
the date hereof September 4, 1999 and
on March 4, 2000
from the second $1,000,000 payable in quarterly
anniversary of installments of $250,000
the date hereof each on September 4, 2000,
through the on December 4, 2000, on
third anniversary March 4, 2000, on March 4,
of the date hereof 2001, and on June 4, 2001
ROYALTY
PERIOD PAYMENTS MINIMUM INSTALLMENTS
------- ---------- --------------------
from the third $1,500,000 payable in quarterly
anniversary of installments of $375,000
the date hereof each on September 4, 2001,
through the fifth on December 4, 2001, on
anniversary of March 4, 2002, on June 4,
the date hereof 2002, on September 4,
2002, on December 4, 2002
on March 4, 2003, and on
June 4, 2003
from the fifth $2,000,000 payable in quarterly
anniversary of the installments of $500,000
date hereof through each on each September 4,
the sixth anniversary December 4, March 4, and
of the date hereof and June 4 of each year
for each one year period
ending on the anniversary
dates thereafter
3.3 SCOPE OF ROYALTY. Sales subject to royalty shall not in any way
be limited by territorial limitations or by the source of those revenues,
and will include any revenues which LICENSEE directs to be paid to any
other Person. The calculation of Sales will be carried out in accordance
with generally accepted accounting principles applied on a consistent
basis. LICENSEE will take all reasonable and prudent steps necessary to
collect monies payable on account of Licensed Products.
3.4 AFFILIATED PERSON SALES. If LICENSEE sells, rents, or offers
for use a Licensed Product or otherwise makes a Sale to any Affiliated
Person, then the Sales with respect thereto shall be the price or terms at
which LICENSEE should have made the same Licensed Product available to a
bona fide third party on an arms length basis. No deductions or allowances
whatsoever shall be made for collections, or for commissions to LICENSEE's
employees, officers, or directors or any other Affiliated Person.
3.5 PERIOD REPORTS. LICENSEE, on the first day of each calendar
quarter, beginning with the calendar quarter in which LICENSEE commences
any actual Sales of Licensed Products, shall deliver to ACCUMED a true and
accurate written report certified by LICENSEE's chief financial officer of
all of its Sales activities relating to the Licensed Product for the
immediately preceding calendar quarter to facilitate the proper computation
of the Required Royalty and Minimum Guaranteed Payments. These reports
shall include the following:
(a) true and correct copies of all current product catalogues
and price lists of LICENSEE;
(b) identification of the quantity and type of any Licensed
Products sold, leased or rented upon which royalties are due;
(c) gross receipts for such sale, lease or rental; and
(d) royalty due ACCUMED.
In addition to the periodic reports described above, LICENSEE shall provide
ACCUMED with copies of LICENSEE's annual audited financial statements
within one hundred twenty (120) days after the end of LICENSEE's fiscal
year.
3.6 FINANCIAL RECORDS. LICENSEE shall keep full, true, and accurate
books of account containing all particulars which may be necessary for the
purpose of showing the royalty amounts payable to ACCUMED hereunder. These
books of account shall be kept by LICENSEE at the usual place where its
other books are kept. These books and their supporting data will be open at
reasonable times, for a period of three (3) years following the end of the
calendar year to which they pertain, for inspection by an independent
certified public accountant retained by ACCUMED for the purpose of
verifying LICENSEE's royalty statements or LICENSEE's compliance with other
provisions of this Agreement pursuant to Section 3.7. LICENSEE shall
prepare or cause the preparation of annual audited financial statements for
the purposes of reporting under Section 3.5.
3.7 AUDIT RIGHTS. ACCUMED shall have the right to have periodic
audits of LICENSEE performed on not less than fifteen (15) days' advance
written notice by ACCUMED to LICENSEE for the purposes of verifying royalty
payments under this Agreement. ACCUMED shall be permitted to perform such
audits not more often than once in any calendar year. ACCUMED may, in its
discretion, retain the services of an independent certified public
accountant to perform any such audit. ACCUMED shall pay for the services of
any such independent certified public accountant, except as provided in
this Section below. ACCUMED will notify LICENSEE if ACCUMED's independent
certified public accountant determines that LICENSEE has understated the
royalties due ACCUMED by five percent (5%) or more over a calendar quarter
(a "Royalty Understatement"). If LICENSEE notifies ACCUMED within fifteen
(15) days of such notice that LICENSEE's own independent certified public
accountant disputes the determination of ACCUMED's certified public
accountant as to any Royalty Understatement (a "LICENSEE Dispute Notice"),
then the parties shall mutually designate a third independent certified
public accountant to audit the royalty payments hereunder. The
determination of such third accountant shall be binding on the parties. If
LICENSEE does not make a LICENSEE Dispute Notice or if any such third
accountant also determines that there has been a Royalty Understatement,
then LICENSEE shall pay to ACCUMED, within fifteen (15) days after notice
of a Royalty Understatement by ACCUMED or such third accountant, as
applicable, (i) the balance of such Royalty Understatement as determined by
ACCUMED's accountant, but if there is a third accountant, as determined by
such third accountant, (ii) a penalty fee equal to five percent (5%) of any
such Royalty Understatement plus interest thereon at a rate equal to one
percent (1%) per month or such lesser amount as required by law, computed
from the day on which such royalties were due and owing to ACCUMED, and
(iii) the reasonable fees of ACCUMED's accountant for its services and, if
applicable, any third accountant for its services. If any such third
accountant determines that there has not been a Royalty Understatement,
then ACCUMED shall pay for the services of such third accountant.
3.8 INTEREST. LICENSEE shall pay ACCUMED interest on all royalty
amounts which are past due under this Agreement at an interest rate equal
to one percent (1%) per month (or such lesser amount as required by law).
Interest under this Section shall be computed from the day the royalty
amounts are due and payable under this Agreement.
3.9 CURRENCY. All payments from LICENSEE to ACCUMED shall be in
U.S. dollars (U.S.$), unless LICENSEE has been paid by any purchaser of the
Licensed Products in some other currency and ACCUMED elects to be paid by
LICENSEE with regard to that transaction in the same currency.
3.10 TAXES. The payment to ACCUMED of the royalties, fees,
compensation, and other payments provided for in this Agreement shall be
free of any taxes, charges, or remittance fees, whether levied by the
federal, state, or municipal governments in the Territory, or by other
authorities, except for such income tax which may be expressly required by
the laws of the governments in the Territory to be paid for the account of
ACCUMED. The payment of any such income taxes levied upon or withheld from
royalties, fees, compensations, or other payments due to ACCUMED, and the
filing of any information or tax returns with respect thereto, shall be the
responsibility of LICENSEE, who shall be liable to ACCUMED with respect to
any amounts, fines, or penalties arising out of or resulting from any
failure, delay, or error in discharging the aforesaid obligation.
SECTION 4
VALIDITY AND MARKING
4.1 VALIDITY. If LICENSEE or another challenges the validity of any
of the Patents once issued, LICENSEE agrees and is obligated to continue
paying all royalties due before such time as a final determination of
invalidity and during the pendency of any such validity challenge, and
LICENSEE is not entitled to any refund or credit for any such past royalty
or Guaranteed License Issue Fee or Guaranteed Minimum Payments. If LICENSEE
challenges the validity of any of the Patents, LICENSEE agrees to pay
ACCUMED's reasonable attorneys fees and all associated costs in defending
such action, unless all of the Claims of each challenged patent are held
invalid or unenforceable. LICENSEE agrees and is obligated to continue
paying royalty payments during the pendency of any challenge to the
validity of any of the Patents. If final judgments that are beyond further
right of appeal are entered which finally invalidate all issued Patents,
thereafter LICENSEE's sole remedy shall be the reduction in the rate of the
Required Royalty in accordance with Section 9.2; and LICENSEE shall
continue thereafter to be obligated to pay such reduced Required Royalty
and any unpaid Guaranteed License Issue Fees and any unpaid Guaranteed
Minimum Payments. LICENSEE shall not challenge the validity of any of the
Technology or the Copyrighted Works.
4.2 MARKING. If any Patent issues, LICENSEE shall xxxx all Licensed
Products covered by the Claims of such Patent with the following statement,
with the bracketed language completed, as appropriate, or, if any Foreign
Patent issues, such other similar statement as may be required under the
laws applicable to the marking of any such Foreign Patent:
"Licensed by InPath, LLC under one or more of the
following patents: United States Patent Nos. [insert the applicable patent
numbers for the Patents which have issued]."
SECTION 5
PROSECUTION; PROTECTION; AND INFRINGEMENT
5.1 PROSECUTION AND PROTECTION.
(a) ACCUMED shall diligently and in a commercially reasonable
manner prosecute the application for and the issuance of the U.S. Patents
and Foreign Patents in Canada and the European Community. ACCUMED shall
have authority, in its discretion, to decide whether to prosecute the
application for and the issuance of Foreign. Patents in countries other
than those described in the first sentence of this paragraph (the "Outside
Countries"). If ACCUMED shall elect to prosecute a Foreign Patent in an
Outside Country under this Section, it shall be at the sole cost and
expense of ACCUMED.
(b) LICENSEE shall notify ACCUMED in writing of LICENSEE's
sale of Licensed Products in any Outside Country upon or prior to the date
on which LICENSEE first sells Licensed Products in such Outside Country. If
a Foreign Patent shall not already be pending or issued in such Outside
Country, ACCUMED shall have twenty-one (21) days from such written notice
to notify LICENSEE in writing whether or not ACCUMED will commence the
prosecution of a Foreign Patent in such Outside Country. If ACCUMED elects,
in such notice, to prosecute a Foreign Patent in such Outside Country,
ACCUMED will promptly commence the prosecution thereof. If ACCUMED elects,
in such notice, not to prosecute a Foreign Patent in such Outside Country
or if ACCUMED fails to make a timely election, then LICENSEE may elect to
prosecute such Foreign Patent, at LICENSEE's sole cost and expense, for and
on behalf of and in the name of ACCUMED. LICENSEE may deduct all reasonable
out-of-pocket costs and expenses, including without limitation, attorneys'
fees and filing costs, incurred by LICENSEE for its prosecution (in
accordance its election under with this paragraph) of Foreign Patents in
any Outside Country from the Required Royalties (but not the Guaranteed
License Issue Fee or any Minimum Guaranteed Payments) applicable to that
Outside Country under Section 3.2. ACCUMED will provide to LICENSEE all
information, papers, instruments or affidavits required to apply for and
obtain Foreign Patents in ACCUMED's name and will provide reasonable
assistance to LICENSEE in LICENSEE's efforts to prosecute any Foreign
Patents in accordance with its election under this paragraph. Any such
Foreign Patents prosecuted by LICENSEE for and on behalf of ACCUMED shall
be the sole and exclusive property of ACCUMED, but LICENSEE shall be
granted a license thereunder coincident with the grant under Section 2.1
for all Foreign Patents.
(c) Except as provided in this Section, for and on behalf of
ACCUMED, LICENSEE shall not prosecute any letters patent in any foreign
country covering any of the Claims of the U.S. Patents or any Foreign
Patents. As requested by ACCUMED from time to time, LICENSEE shall provide
reasonable assistance to ACCUMED (at ACCUMED's sole cost and expense for
the U.S. Patents and the Foreign Patents in Canada and the European
Community but otherwise at the equal cost and expense of ACCUMED and
LICENSEE or LICENSEE's sole expense as determined in accordance with
paragraph (b) of this Section) in ACCUMED's prosecution of the Patents in
accordance with this Section. ACCUMED shall maintain any issued Patents in
a commercially reasonable manner. ACCUMED shall use commercially reasonable
efforts to maintain the secrecy of its trade secrets comprising any of the
Technology. To the extent LICENSEE becomes aware of any matters or events
which may affect the validity of the Patents or protection of the
Technology, LICENSEE shall inform ACCUMED of such matters or events within
ten (10) business days after LICENSEE becomes aware of any such matter's or
events.
(d) Nothing in this Section shall (i) require either ACCUMED
or LICENSEE to prosecute patents in any Outside Country or (ii) restrict
LICENSEE from exercising its exclusive license rights under this Agreement
in any Outside Country or throughout the Territory, regardless of whether
LICENSEE or ACCUMED elects to prosecute any application for Foreign Patents
therein.
5.2 INFRINGEMENT BY THIRD PARTIES. Each party shall inform the
other party of any infringement or suspected infringement of the Patents or
infringement (including any misappropriation) of the Technology of which
such party becomes aware within ten (10) business days after such party
becomes aware of any such infringement or suspected infringement. For a
period of thirty (30) days after receipt by ACCUMED of, or ACCUMED's
sending of, such notice of infringement, ACCUMED will have the exclusive
right to commence an action and otherwise assert rights in the Patents and
the Technology against any such infringers or suspected infringers and
pertain all proceeds of such action or proceeding brought by it and will
have the right at its, sole discretion to make any settlement or compromise
with the third-party infringer. If ACCUMED shall elect to prosecute any
such infringer, LICENSEE shall take such steps as are reasonably requested
by ACCUMED to enable it to protect its rights under the Patents and under
the Technology against any such infringement or suspected infringement. If
(i) ACCUMED fails to commence an action or otherwise assert its rights in
the Patents and the Technology against any such infringers or suspected
infringers within such thirty (30) day period and (ii) LICENSEE provides
ACCUMED with the opinion of patent counsel mutually acceptable to the
parties stating that there is a likelihood of infringement or
misappropriation by such suspected infringers (an "Infringement Opinion"),
then LICENSEE may bring an action or proceeding (including any alternative
dispute resolution process) to enjoin the infringement, to recover damages
for it, or both and ACCUMED grants LICENSEE the right to use ACCUMED's name
in connection therewith and will have the right at LICENSEE's sole
discretion to make any settlement or compromise with the third-party
infringer, in accordance with and subject to the provisions set forth
below. If an Infringement Opinion is delivered to ACCUMED and, accordingly,
LICENSEE is permitted to bring such action, then LICENSEE may elect to
deduct a percentage of its out-of-pocket costs and expenses (but otherwise
will bear all other costs and expenses), which includes without limitation
court costs and attorneys' fees for such action up to a maximum deduction
of fifty percent (the "Fee Percentage") and shall notify ACCUMED of such
election and the applicable Fee Percentage when the Infringement Opinion is
delivered by LICENSEE to ACCUMED. LICENSEE shall be permitted to deduct
from future Guaranteed License Issue Fees, Minimum Guaranteed Payments, and
Required Royalties, as they become due under this Agreement, that portion
of its out-of-pocket expenses in an amount equal to the Fee Percentage
thereof. All proceeds of such action or proceeding brought by LICENSEE (if
any) shall be shared between ACCUMED and LICENSEE pro rata in accordance
with the Fee Percentage (i.e. ACCUMED shall receive the Fee Percentage of
such proceeds and LICENSEE shall receive the remainder). If LICENSEE shall
be permitted to bring an action pursuant to this Section, ACCUMED shall
take such steps as are reasonably requested by LICENSEE to enable it to
protect its licensee rights under the Patents and under the Technology
against any such infringement or suspected infringement.
5.3 INFRINGEMENT OF THIRD PARTY RIGHTS. If LICENSEE makes or incurs
any out-of-pocket payments for settlements, damages, and/or royalties owing
to third parties (exclusive of one-half of LICENSEE's court costs,
attorneys' fees and other expenses of defense) as result of any claim by a
third party that the Patents or Technology incorporated in any Licensed
Products infringe or violate any third party patent, copyright, trademark,
trade secret or other proprietary right, then LICENSEE may deduct an amount
equal to such out-of-pocket payments from future Guaranteed License Issue
Fees, Minimum Guaranteed Payments or Required Royalties as they become due
under this Agreement. The foregoing remedy will be the exclusive remedy of
LICENSEE for any third-party claim of infringement or misappropriation.
SECTION 6
CONFIDENTIALITY; NON-COMPETITION; NON-SOLICITATION
6.1 CONFIDENTIALITY.
(a) PROPRIETARY INFORMATION. Each party will exercise all
reasonable precaution to retain in confidence and not disclose proprietary
information relating to (i) the Patents (except to the extent that the
Patents become issued patents) and the Technology, (ii) product designs,
prototypes, schematics, trade secrets (including ideas, formulas,
compositions, inventions (whether patentable or unpatentable and whether or
not reduced to practice), know-how, manufacturing and production processes
and techniques, research and development information, drawings,
specifications, designs, bills of material, and technical data), and
embodiments thereof (in whatever form or medium), (iii) information
concerning unsuccessful tests and ideas and technologies which have not
worked. as well as information concerning successful technologies, (iv)
information concerning either party's and its affiliates' and subsidiaries'
business plans, (v) information which either party compiles and maintains
in databases for its affiliates' and subsidiaries' internal business
purposes, (vi) information disclosed to either party in documents marked
"confidential," (vii) any software, firmware, documents (including, without
limitation, manuals, manuscripts, drawings, blueprints, schematics,
engineering logbooks, and laboratory notebooks), and methodologies, and
(viii) other things and ideas which one party may disclose to the other
party in connection with this Agreement or which one party may commission
the other party to create, improve or develop, and any other information
which a party is informed that the other party regards as confidential
("Proprietary Information"); provided however that, notwithstanding
anything contained herein to the contrary, (a) such Proprietary Information
shall only include such information (1) that each party actually treats as
confidential and (2) with respect to which each party takes appropriate
steps to safeguard from disclosure to others and (b) such Proprietary
Information described in clauses (ii) through (viii) above shall only
include such information which one party may disclose to and which is
received by the other party,
(b) NON-DISCLOSURE. Each party shall receive, develop and
hold Proprietary Information in confidence and shall use its best efforts
to preserve the confidentiality of such Proprietary Information consistent
with the manner in which it protects its own most confidential business
information. Disclosures of Proprietary Information to a party's personnel
shall be limited to "designated employees" with a need to know same and
made solely as necessary to enable them to exercise their employment or
fiduciary duties. Each party shall require each of its designated employees
to sign a confidentiality agreement prior to the time such individual is
first allowed access to Proprietary Information.
(c) REMEDIES. Each party acknowledges that its breach of the
foregoing confidentiality obligations would cause the other party
irreparable injury for which there would be no adequate remedy at law.
Accordingly, each party agrees that if such breach or threatened breach is
proved by the other party, the other party shall be entitled to appropriate
injunctive relief and such other relief as the court deems equitable in the
circumstances.
(d) DURATION. The parties' confidentiality obligations under
this Section shall remain in effect until the later of (i) two (2) years
after the termination of this Agreement and (ii) so long as such
information remains protectable as a trade secret under applicable law,
even if dealings between LICENSEE and ACCUMED have ceased.
(e) PUBLIC DOMAIN. This Section shall not restrict the rights
of a party to disclose information that:
(i) is requested or consented to be disclosed by the
owner thereof in writing;
(ii) is or becomes generally available to the public
other than by breach of this Agreement or other obligation of
confidentiality; or
(iii) one party is required by law to disclose provided,
however, prior to any such disclosure, such party shall immediately notify
the other party in writing if such party believes that there will be a
legal requirement to disclose, to enable the other party to determine a
more appropriate means of disclosure and so that the other party is
provided the opportunity to contest such disclosure requirement through
legal means.
6.2 NON-COMPETITION.
(a) LICENSEE COVENANT. LICENSEE shall not, anywhere in the
world, without the prior written approval of ACCUMED, until the termination
of this Agreement, engage, directly or indirectly, in ACCUMED's Protected
Business, whether as a sole proprietor, partner, corporate officer,
employee, director, shareholder, consultant, agent, independent contractor,
trustee, or in any other manner by which LICENSEE could hold any beneficial
interest in ACCUMED's Protected Business or could provide any service or
product to ACCUMED's Protected Business. LICENSEE shall not, directly or
indirectly, until the termination of this Agreement, without the prior
written approval of ACCUMED, call upon, cause to be called upon, solicit or
assist in the solicitation of, any customer or potential customer of
ACCUMED for the purpose of diverting any existing or future business of
such customers from ACCUMED's Protected Business. LICENSEE shall not engage
in any disparagement, whether direct or indirect, through innuendo or
otherwise, of ACCUMED or any of its employees, agents, officers, directors,
shareholders or affiliates.
(b) LICENSEE EXCEPTIONS. The restrictions of paragraph (a) of
this Section 6.2 shall not apply to: (i) the SAMBA Transaction, (ii)
LICENSEE's ownership of less than five percent (5%) of the outstanding
stock of a publicly-traded corporation or a privately held limited
partnership, limited liability company, or corporation engaged in ACCUMED's
Protected Business, or (iii) LICENSEE's acquisition of a minority equity
interest in a third party which is already engaged in ACCUMED's Protected
Business and not an Affiliated Person at the time of such acquisition.
(c) ACCUMED'S PROTECTED BUSINESS. "ACCUMED's Protected
Business" means the design, development, manufacture, marketing, sale, or
support of products or services that relat-1 to in vitro cytological and/or
histological specimen and/or sample fixation, staining, labeling,
processing, deposition, and/or analysis by any means and for any purpose,
except (a) to the extent the foregoing takes place at the point-of-care and
concurrent with a patient's physical examination, no restriction under this
Section shall apply to LICENSEE and (b) to the extent the foregoing is not
at the point-of-care and concurrent with a patient's physical examination,
no restriction under this Section shall apply to LICENSEE so long as where
(1) any imaging or optical sensing is involved, it is made at a sensor
resolution greater than 100 microns, (2) any processing, collection,
analysis, or review of specimens or samples is involved, it is not based
upon slides or slide based methods, and (3) any imaging or optical sensing
is involved, it is not based upon microscopic imaging, morphological
processing, or morphological analysis, and it is not nucleic acid (e.g.
DNA) probe-based. For the purposes of this definition, "concurrent" means
an event taking place wholly within the same period as any given visit to a
physician by a patient.
(d) SAMBA TRANSACTION. "SAMBA Transaction" means an agreement
or technology joint venture between LICENSEE and Unilog, S.A., a
corporation organized under the laws of France ("Unilog"), with respect to
Unilog's current SAMBA technology.
(e) ACCUMED COVENANT . ACCUMED shall not, anywhere in the
world, without the prior written approval of LICENSEE, until the
termination of this Agreement, engage, directly or indirectly, in
LICENSEE's Protected Business, whether as a sole proprietor, partner,
corporate officer, employee, director, shareholder, consultant, agent,
independent contractor, trustee, or in any other manner by which ACCUMED
could hold any beneficial interest in LICENSEE's Protected Business or
could provide any service or product to LICENSEE's Protected Business.
ACCUMED shall not, directly or indirectly, until the termination of this
Agreement, without the prior written approval of LICENSEE, call upon, cause
to be called upon, solicit or assist in the solicitation of, any customer
or potential customer of LICENSEE for the purpose of diverting any existing
or future business of such customers from LICENSEE's Protected Business.
ACCUMED shall not engage in any disparagement, whether direct or indirect,
through innuendo or otherwise, of LICENSEE or any of its employees, agents,
officers, directors, shareholders or affiliates.
(f) ACCUMED EXCEPTIONS. The restrictions of paragraph (e) of
this Section 6.2 shall not apply to: (i) ACCUMED's ownership of less than
five percent (5%) of the outstanding stock of a publicly-traded corporation
or a privately held limited partnership, limited liability company, or
corporation engaged in LICENSEE's Protected Business or (ii) ACCUMED's
acquisition of a minority equity interest in a third party which is already
engaged in LICENSEE's Protected Business and not an Affiliated Person at
the time of such acquisition.
(g) LICENSEE'S PROTECTED BUSINESS. "LICENSEE's Protected
Business" means (i) the design, development, manufacture, marketing, sale,
or support of products or services that relate to in vivo analysis by any
means and for any purpose or (ii) the design, development, manufacture,
marketing, sale, or support of products or services that relate to in vitro
cytological and/or histological specimen and/or sample fixation, staining,
labeling, processing, deposition, and/or analysis: (A) concurrent with a
patient's physical examination or (B) not concurrent with a patient's
examination provided that if any processing of specimens or examples is
involved, it is not based on slides. For the purposes of this definition,
"concurrent" means an event taking place wholly within the same period as
any given visit to a physician by a patient.
6.3 NON-SOLICITATION.
(a) LICENSEE COVENANT. LICENSEE shall not, directly or
indirectly, until the termination of this Agreement, without the prior
written approval of ACCUMED, employ, engage, or seek to employ or engage,
directly or indirectly, any employee of ACCUMED.
(b) LICENSEE EXCEPTIONS. The restrictions of paragraph (a) of
this Section 6.3 shall not apply to LICENSEE's solicitation of. (i) an
employee of ACCUMED who is not a party to a noncompetition agreement in
favor of ACCUMED and (ii) Xxxxxxx Xxxxxx and Xxxxxxx Xxxxxxx, Ph.D.;
provided that LICENSEE shall not contact or communicate with Messrs. Xxxxxx
or Domanik unless (A) such communications are carried out and done in a
discrete and professional manner and well outside -the vicinity of
ACCUMED's offices and in privacy from any employee, consultant, contractor,
vendor or supplier of ACCUMED; (B) any persons communicating with Messrs.
Xxxxxx or Xxxxxxx will strictly maintain the confidentiality of said
communications; and (C) LICENSEE shall advise ACCUMED immediately
concerning the nature and quality of the response of either Messrs. Xxxxxx
or Domanik to any offers made by LICENSEE. Should either Messrs. Xxxxxx or
Xxxxxxx accept employment with LICENSEE, LICENSEE shall give ACCUMED at
least ninety (90) days prior notice thereof and for the ninety (90) day
period ending after either Messrs. Xxxxxx or Domanik leave their employment
with ACCUMED and accept employment with LICENSEE, ACCUMED shall be entitled
to engaging the services of either such person (at rates not greater than
LICENSEE's cost for the same services) in order to complete current
projects of ACCUMED.
(c) LICENSEE WARRANTY. LICENSEE represents and warrants to
ACCUMED as of the date hereof the neither Messrs. Xxxxxx nor Xxxxxxx have
accepted any offer of employment or other position with LICENSEE or any
consulting or independent contractor opportunity with LICENSEE.
(d) ACCUMED COVENANT. ACCUMED shall not, directly or
indirectly, until the termination of this Agreement, without the prior
written approval of LICENSEE, employ, engage, or seek to employ or engage,
directly or indirectly, any employee of LICENSEE.
(e) ACCUMED EXCEPTIONS. The restrictions of paragraph (d) of
this Section 6.3 shall not apply to (i) ACCUMED's solicitation of an
employee of LICENSEE who is not a party to a noncompetition agreement in
favor of LICENSEE and (ii) Xxxxxxx Xxxxxx and Xxxxxxx Xxxxxxx, Ph.D. if
either shall become an employee of LICENSEE.
SECTION 7
GENERAL RE, PRESENTATIONS AND WARRANTIES
7.1 REPRESENTATIONS OF LICENSEE. LICENSEE hereby represents and
warrants to ACCUMED, as of the date hereof, as follows:
(a) LICENSEE: (i) is a limited liability company duly formed
and validly existing under the laws of the State of Delaware; (ii) has the
power and authority to own its property and to carry on its business as now
conducted or as presently contemplated; and (iii) has the power and
authority to execute, deliver and perform this Agreement.
(b) The execution, delivery and performance by LICENSEE of
this Agreement: (i) have been duly authorized by all requisite action on
the part of LICENSEE, including any requisite approval of its managers and
members; (ii) do not violate any provision of law, the articles of
formation or operating agreement of LICENSEE, or any applicable order of
any court or other governmental agency; (iii) do not breach of the terms of
any agreement, document, or instrument to which Licensee is a party or
which is binding upon LICENSEE or its property; and (iv) do not require the
approval, consent, authorization or act of, or the making of any
declaration, filing or registration with, any person or entity (other than
such notifications or filings required under applicable state securities
laws, if any, which shall be made by LICENSEE on a timely basis).
(c) This Agreement constitutes a legal, valid and binding
obligation of LICENSEE, enforceable against LICENSEE in accordance with its
terms, subject, as to enforcement, to applicable bankruptcy,
reorganization, insolvency and similar laws affecting creditors' rights
generally and to moratorium laws from time to time in effect and to the
extent that such enforcement is subject to the principles of equity in a
proceeding at law or in equity.
7.2 REPRESENTATIONS OF ACCUMED. ACCUMED hereby represents and
warrants to LICENSEE, as of the date hereof, as follows:
(a) ACCUMED: (i) is a corporation duly organized and validly
existing under the laws of the State of Delaware; (ii) has the power and
authority to own its property and to carry on its business as now conducted
or as presently contemplated; and (iii) has the power and authority to
execute, deliver and perform this Agreement.
(b) The execution, delivery and performance by ACCUMED of
this Agreement: (i) have been duly authorized by all requisite corporate
action on the part of ACCUMED, including any requisite approval of its
board of directors; (ii) do not violate any provision of law, the
certificate of incorporation of ACCUMED, or any applicable order of any
court or other governmental agency; (iii) do not breach of the terms of any
agreement, document, or instrument to which Licensee is a party or which is
binding upon ACCUMED or its property; and (iv) do not, subject to
LICENSEE's obligations under Section 10.2, require the approval, consent,
authorization or act of, or the making of any declaration, filing or
registration with, any person or entity (other than such notifications or
filings required under applicable state securities laws, if any, which
shall be made by ACCUMED on a timely basis).
(c) This Agreement constitutes a legal, valid and binding
obligation of ACCUMED, enforceable against ACCUMED in accordance with its
terms, subject, as to enforcement, to applicable bankruptcy,
reorganization, insolvency and similar laws affecting creditors' rights
generally and to moratorium laws from time to time in effect and to the
extent that such enforcement is subject to the principles of equity in a
proceeding at law or in equity.
SECTION 8
DEFAULT AND REMEDIES
8.1 TERMINATION DEFAULT. The occurrence of any of the following
events shall constitute a "Termination Default" under this Agreement:
(a) LICENSEE fails to pay to ACCUMED any of the Guaranteed
License Issue Fee, the Guaranteed Minimum Payments, the Required Royalty,
or any other royalty payments, interest, fees, or other amounts due and
owing to ACCUMED and any such failure to pay shall continue for more than
sixty (60) days after written notice thereof from ACCUMED to Licensee; or
(b) the material breach by LICENSEE of any of the restrictive
covenants of Sections 6.2 or 6.3 and such breach shall be determined by a
court or arbitration body of competent jurisdiction.
8.2 REMEDIES. If any Termination Default occurs, ACCUMED may elect,
at its option, any or all of the following: (a) to terminate or suspend any
or all of the licenses granted under this Agreement; or (b) convert any or
all of the licenses granted under this Agreement to non-exclusive licenses.
This Agreement and the licenses granted by ACCUMED to LICENSEE hereunder
cannot be terminated for any default of any term or condition of this
Agreement other than a Termination Default. If a default hereunder other
than a Termination Default occurs, the non-defaulting or non-breaching
party may not terminate this Agreement but may seek monetary damages or
appropriate injunctive relief (other than termination of the licenses
hereunder) from the defaulting or breaching party in a court or arbitration
body of competent jurisdiction.
8.3 CUMULATION. Each party shall have, in addition to any other
rights and remedies contained in this Agreement or in the Related Party
Agreements, all of the rights and remedies available under applicable laws,
all of which rights and remedies shall be cumulative, and nonexclusive, to
the extent permitted by law.
8.4 EFFECTS OF WAIVER. The failure of either party to exercise any
of its rights hereunder shall not constitute a waiver of any of such
rights, or other rights or remedies available to that party hereunder or
under applicable law.
8.5 NO WAIVER. No delay or omission of either party to exercise any
right under this Agreement or any Related Party Agreement shall impair such
right or be construed to be a waiver of any Default or an acquiescence
therein, and any single or partial exercise of any such right shall not
preclude other or further exercise thereof or the exercise of any other
right, and no waiver, amendment or other variation of the terms, conditions
or provisions of this Agreement or any of Related Party Agreement
whatsoever shall be valid unless in a writing signed by that party and then
only to the extent in such writing specifically set forth. All remedies
contained in this Agreement, the Related Party Agreements or by law
afforded shall be cumulative.
SECTION 9
TERM AND TERMINATION
9.1 TERM. Unless earlier terminated by ACCUMED pursuant to Section
8.2 or by LICENSEE pursuant to Section 9.3, this Agreement and the licenses
granted herein shall terminate upon the later of (a) twenty (20) years from
the effective date hereof and (b) if any Patent shall issue, the expiration
or termination of the last issued Patent, including any modifications,
extensions, or reissues thereof.
9.2 EFFECT OF PATENT INVALIDATION. If any Patents shall issue and,
thereafter, if all Claims of all of the Patents should be finally
determined to be invalid by a decision of a court of competent jurisdiction
that is final beyond further right of appeal, then the rate of the Required
Royalty shall be reduced from seven percent (7%) to six and one-half
percent (6.5%). LICENSEE acknowledges that the licenses hereunder in the
Technology independent of any issued and valid Patent are valuable and
reasonable consideration for the Required Royalty and Minimum Guaranteed
Payments. LICENSEE shall pay (subject to paragraph (b) of Section 5. 1,
Section 5.2, and Section 5.3) all Required Royalties (at the seven percent
(7%) rate) due and payable before any such final determination of
invalidity and during the pendency of any validity challenge, and LICENSEE
is not entitled to any refund or credit for any past Minimum Guaranteed
Payments, Required Royalties, or the Guaranteed License Issue Fee payments.
LICENSEE shall pay all royalty payments accruing during the pendency of any
challenge to the validity of any of the Patents.
9.3 TERMINATION BY LICENSEE. LICENSEE shall not be entitled to
terminate its obligations under this Agreement until the earlier to occur
of (i) the fifth anniversary date of this Agreement and (ii) ACCUMED's
receipt of Minimum Guaranteed Payments in an aggregate amount of at least
Five Million Dollars ($5,000,000) (the period from and after the date of
execution of this Agreement and ending upon the earlier event described in
the immediately preceding sentence is the "Non-Cancellation Period"). After
the commencement of the Non-Cancellation Period, LICENSEE may, at its
election, (x) if LICENSEE shall have notified ACCUMED after the
Non-Cancellation Period that in LICENSEE's reasonable determination the
commercial exploitation of the Licensed Product is not commercially viable,
terminate the exclusivity of the licenses granted hereunder upon thirty
(30) days' written notice to ACCUMED or (y) terminate this Agreement. If
LICENSEE shall elect to terminate the exclusivity in accordance with clause
(x) above, then LICENSEE's obligation to pay the Minimum Guaranteed
Payments shall terminate immediately; provided, however, that LICENSEE
shall continue to be obligated to make payments to ACCUMED of any Required
Royalties. LICENSEE shall pay all Minimum Guaranteed Payments due and
payable before any such election to terminate the exclusivity in accordance
with clause (x) above and LICENSEE is not entitled to any refund or credit
for any past Minimum Guaranteed Payments, Required Royalties, or the
Guaranteed License Issue Fee payments.
9.4 EFFECT OF TERMINATION. Upon any termination of this Agreement
becoming effective, LICENSEE shall be relieved of all duties and
obligations, except that LICENSEE shall in any event be obligated to pay to
ACCUMED (i) royalties and interest accrued and unpaid up to that time and
royalties and interest subsequently due on Licensed Products used, sold,
leased or rented for use in connection with the rights granted under this
license prior to termination becoming effective and (ii) the Guaranteed
License Issue Fee (if not already paid) and the Minimum Guaranteed Payments
and any unpaid Required Royalties accrued and unpaid as of the time of such
termination. LICENSEE shall under no circumstances be entitled to a return
of monies theretofore paid or to anabatement of royalties and interest
accrued and unpaid on the effective date of termination, including
royalties and interest on Licensed Products used, rented or sold in
connection with the rights granted under this license prior to the
effective date of termination. If this Agreement shall terminate, then
LICENSEE shall, upon request of ACCUMED, promptly return to ACCUMED (or, at
ACCUMED's discretion, destroy and certify to ACCUMED the destruction of)
the originals and all copies of any and all materials in its possession or
under its control to the extent they are Copyrighted Works. Upon any
election by LICENSEE in accordance with this Agreement to convert the
licenses hereunder to non-exclusive licenses, then LICENSEE shall, upon
request of ACCUMED, promptly return to ACCUMED copies of any and all
materials and documents in its possession or under its control to the
extent, these materials relate in any manner to the Licensed Product.
9.5 SURVIVAL OF CERTAIN TERMS. Notwithstanding the termination of
this Agreement as provided above, Sections 2.5, 5.3, 6.1, 8.1, 8.2, 8.3,
8.4, 8.5, 9.1, 9.2, 9.3, 9.4, 9.5, 10.1, 10.2, 10.3, 10.4, 10.5, 10.6, 10,
10.7, 10.8 10.9, and 10. 10 shall survive the termination of this
Agreement. All representations, warranties, indemnities and covenants
contained in this Agreement shall continue in full force and effect and
shall survive notwithstanding the final payments of all amounts due
hereunder or the termination of this Agreement in any manner whatsoever.
SECTION 10
MISCELLANEOUS PROVISIONS
10.1 NON-USE OF NAMES. Neither party grants to the other party and
each party agrees that it will not use any trademarks or service marks of
the other party, whether registered or common law, nor make reference to
the Patents or the Licensed Product under which this license is granted in
a disparaging manner in any advertising, promotional, or sales literature.
This provision is not intended to prevent lawful comparative advertising,
but to protect each party's good name and goodwill.
10.2 GOVERNMENT AUTHORIZATION. LICENSEE assumes the obligation at
all times, and at its own expense, of complying with all laws,
requirements, and regulations of the government of the Territory affecting
or relating to this Agreement or the Licensed Product.
10.3 LIMITATION OF LIABILITY AND WARRANTIES; INDEMNIFICATION.
(a) (a) ACCUMED DISCLAIMS ANY WARRANTIES, INCLUDING WITHOUT
LIMITATION ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, FOR ANY INFORMATION OR THE RESULTS OF USING ANY
INTELLECTUAL PROPERTY LICENSED UNDER THIS AGREEMENT WITH RESPECT TO
LICENSEE OR ANY PURCHASER OF LICENSED PRODUCTS, OR (EXCEPT AS EXPRESSLY
PROVIDED IN SECTION 5.3) INTELLECTUAL PROPERTY INFRINGEMENT RELATED IN ANY
WAY TO THIS AGREEMENT.
(b) Notwithstanding anything to the contrary contained
herein, no party shall, under any circumstances, be liable to any other
party for consequential, incidental, or special damages of the other party,
including but not limited to, lost profits, even if such party has been
apprised of the likelihood of such damages.
(c) LICENSEE shall fully protect, indemnify and hold harmless
ACCUMED and its subsidiaries, affiliates and their officers, directors, and
employees from and against any and all costs, expenses, liabilities, or
claims of whatsoever nature or kind of any injury or damage, including,
without limitation, consequential damages, to third persons or property of
third persons, based upon or arising directly out of or resulting directly
from:
(i) Any breach by LICENSEE of any of its obligations or
covenants contained herein;
(ii) LICENSEE's or its agent's manufacture, use,
servicing, maintenance, or sales of the Licensed Products, or parts
thereof,
(iii) Any claims alleging product liability, false or
misleading advertising, disease or death of any person, negligence or other
tortious acts or omissions based on the design and application of the
Licensed Products; or
(iv) Any claims for LICENSEE's negligent or willful acts
or omissions.
(d) If LICENSEE or any of its customers, distributors,
agents, or dealers is charged with or sued for infringement of any patent
by reason of having manufactured, used, offered to sell, or sold any of the
Licensed Products within the scope of this Agreement herein granted,
LICENSEE shall have the sole responsibility for the investigation of each
such charge or suit of infringement, the defense of each such charge or
suit, and the settlement of each charge or suit.
(e) From and after the date of any first Sale of any Licensed
Product and during the term of this Agreement, LICENSEE shall maintain at
its own expense comprehensive general liability insurance for claims for
damages arising from bodily injury (including death) and property damages
caused by, or arising out of, acts or omissions of its employees and shall
name ACCUMED as an additional insured thereon. The minimum limits of such
insurance will be $ 1,000,000 per individual; $ 2,000,000 per accident
involving bodily injury; and $ 1,000,000 per accident involving property
damage. Maintenance of such insurance coverage shall not relieve LICENSEE
of any responsibility under this Agreement for damages in excess of such
insurance limits. LICENSEE shall name ACCUMED as an additional insured on
its general commercial liability insurance policies, and LICENSEE shall
furnish or cause to be furnished to ACCUMED a certificate of such insurance
promptly upon request by ACCUMED. Any such insurance policy shall provide
that the insurer shall give ACCUMED at least thirty days prior written
notice of any impending cancellation, nonrenewal, expiration, or reduction
in coverage of the insurance.
10.4 ENTIRE AGREEMENT. This Agreement, together with the Schedules
incorporated by reference herein, constitutes the entire agreement between
ACCUMED and LICENSEE relating to the subject matter hereof There are no
terms, obligations, covenants, representations, statements, or conditions
other than those contained herein. No variation or modification of this
Agreement or waiver of any of the terms or provisions hereof shall be
deemed valid unless made in a writing signed by all parties hereto.
10.5 NOTICES. All notices and other communications required or
desired to be served, given, or delivered hereunder shall be made in
writing or by a telecommunications device capable of creating a written
record and shall be addressed
if to ACCUMED, at
000 Xxxxx Xxxxxxxx Xxxxxx
Xxxxx 000
Xxxxxxx, Xxxxxxxx 00000
Attention: Xxxx X. Xxxxxxxx,
to the party to be notified as follows:
Chairman, President, and Chief Executive Officer
Telephone Number: (000) 000-0000
Telecopy Number: (312) 642-3 101
if to LICENSEE, at
InPath, LLC
000 Xxxxx Xxxxxxxx Xxxxxx
Xxxxx 000
Xxxxxxx, Xxxxxxxx, 00000
Attention: Xxxxx X. Xxxxxxxx, Chairman and CEO
Telephone Number: (000) 000-0000
Telecopy Number: (000) 000-0000
or, as to each party, at such other address as designated by such party in
a written notice to the other party. Notices shall be deemed to have been
duly given (i) if delivered personally or otherwise actually received, (ii)
if sent by overnight delivery service, (iii) if mailed by first class
United States mail, postage prepaid, registered or certified, with return
receipt requested, or (iv) if sent by telecopy. Notice mailed as provided
in clause (iii) above shall be effective upon the expiration of three (3)
business days after its deposit in the United States mail and notice sent
as provided in clause (iv) above shall be effective upon transmission.
Notice given in any other manner described in this paragraph shall be
effective upon receipt by the addressee thereof-, provided, however , that
if any notice is tendered to an addressee and delivery thereof is refused
by such addressee, such notice shall be effective upon such tender.
10.6 HEADINGS. The headings appearing at the beginning of the
numbered articles and sections hereof have been inserted for convenience
only and do not constitute any part of this Agreement.
10.7 INVALID SECTIONS. Should any one section, or portion thereof,
of this Agreement be held invalid or invalidated by reason of any law,
statute or regulation existing now or in the future in any jurisdiction by
any court of competent jurisdiction or by a legally enforceable directive
of any governmental body, such section or portion thereof shall be validly
reformed so as to approximate the intent of the parties as nearly as
possible, and, if unenforceable, shall be divisible and deleted in such
jurisdiction; and otherwise this Agreement shall not be affected.
10.8 SUCCESSION. This Agreement shall be binding upon and inure to
the benefit of LICENSEE and its successors and assignees permitted
hereunder and ACCUMED and its successors and assignees permitted hereunder.
LICENSEE shall not assign this Agreement, except in a sale of substantially
all of the assets or equity shares of LICENSEE, to, or through a merger of
LICENSEE into, another entity which agrees in writing to be bound by this
Agreement. ACCUMED shall not assign this Agreement, except in a sale of
substantially all of the assets or equity shares of ACCUMED to, or through
a merger of ACCUMED into, another entity which agrees in writing to be
bound by this Agreement.
10.9 GOVERNING LAW, JURISDICTION. This Agreement shall be considered
as having been made in the United States of America and shall be construed
and the respective rights of the parties determined in accordance with the
laws of the State of Illinois. Each party hereto agrees that any legal
action or proceeding arising hereunder shall be brought either in federal
or state courts located in Xxxx County, Illinois and irrevocably submit
themselves to the jurisdiction of those courts.
10.10 INDEPENDENT CONTRACTORS. Each party hereto acknowledges that it is
and will be an independent contractor and under no circumstances shall such
be considered an agent, employee, partner or joint venturer of or with any
other party hereto. No authority or right is granted to any party to assume
or create any obligation or responsibility, express or implied, on behalf
of or in the name of any other party.
-
IN WITNESS WBEREOF, the parties hereto have caused this Patent and
Technology License Agreement to be executed as of the day and year first
above written.
ACCUMED INTERNATIONAL, INC.
By: /s/ Xxxx X. Xxxxxxxx
-----------------------------
Name: Xxxx X. Xxxxxxxx
-----------------------------
Title: CEO
-----------------------------
INPATH, LLC
By: /s/ Xxxxx X. Xxxxxxxx
-----------------------------
Name: Xxxxx X. Xxxxxxxx
-----------------------------
Title: CEO
-----------------------------
