EXHIBIT 10.52
FIRST AMENDMENT TO
LICENSE AND ROYALTY AGREEMENT
This First Amendment To License and Royalty Agreement ("Amendment"), is
made and entered into as of January 18, 2000 (the "Amendment Date"), by and
among LASERSIGHT TECHNOLOGIES, INC., a Delaware corporation ("Licensee"), XXXX
X. XXXX, M.D. and XXXXXX XXXXXXX (collectively, the "Licensors").
WHEREAS, the Licensors and Licensee have entered into that certain
License and Royalty Agreement dated as of September 10, 1997 (the "Agreement");
WHEREAS, the Licensors and Licensee desire to amend certain terms of
the Agreement as provided herein with certain amendments being conditioned on
the occurrence of future events; and
WHEREAS, LaserSight Incorporated, a Delaware corporation
("LaserSight"), has agreed to guaranty certain obligations of Licensee.
NOW, THEREFORE, for and in consideration of the mutual promises and
valuable consideration set forth herein, the parties hereto mutually agree as
follows:
1. Amendments to Agreement Effective Immediately. As of the
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Amendment Date the Agreement shall be revised as follows:
1.1 Section 1(b) of the Agreement. Section 1(b) of the
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Agreement is deleted in its entirety.
1.2 Section 2. Section 2 of the Agreement shall be deleted in
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its entirety and replaced with the following:
2. Term. This Agreement shall be effective as of the date
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first set forth above (the "Effective Date"), and shall
commence on January 1, 2000 (the "Commencement Date"), and
shall continue thereafter until July 31, 2002 (the "Initial
Term"), unless earlier terminated as provided herein. At the
conclusion of the Initial Term Licensee shall have the sole
option to renew this Agreement for additional one (1) year
terms (each a "Renewal Term" and collectively "Renewal Terms",
and the Initial Term together with the Renewal Terms shall
constitute the "Term") upon the terms and conditions as set
forth herein; provided, however, with respect to Licensee's
obligations pursuant to Section 5 of this Agreement during the
Renewal Term(s), Licensee shall be obligated to pay to
Licensors only the payments described in Sections 5(a)(v) and
5(e).
1.3 Section 4(f). Section 4(f) of the Agreement shall be
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deleted in its entirety.
1.4 Section 5(a) of the Agreement. The following new Section
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5(a)(vi) shall be insertedinto the Agreement:
(vi) $200,000 U.S. upon Licensee's receipt of a completely
executed copy of the Amendment, and $200,000 U.S. on April 1,
2000 (such payments shall be referred to herein as the "Advanced
Payments").
1.5 Section 5(b) of the Agreement. Section 5(b) of the Agreement
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is deleted in its entirety and the following inserted in its place:
(b) [INTENTIONALLY LEFT BLANK]
1.6 Section 5(c)(iii) of the Agreement. Section 5(c)(iii) of
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the Agreement shall be deleted in its entirety and replaced with the
following:
(iii) for purposes of determining Gross Profit, all amounts
invoiced by Licensee or LaserSight shall be included which are
the result of sales of Covered Products (as defined herein)
and other components which are related to the Covered Products
including, but not limited to, (A) disposable or reusable
microkeratome with gear box, suction ring, and suction handle,
(B) motor, (C) motor power cord, (D) tonometer, (E) suction
and power supply, (F) foot switch, (G) tubing, (H) user's
manual, (I) sterile packaging, (J) control consoles, (K)
blades, (L) replacement parts, (M) lid speculum, and other
component parts which are manufactured utilizing the Licensed
Patents and/or the Licensed Technology (collectively, the
"Products"). For purposes of this Section 5(c)(iii), the term
"Covered Products" shall mean Licensee's UniShaperTM keratome,
UltraShaperTM keratome and any other keratome manufactured,
distributed or sold by Licensee or LaserSight.
1.7 Section 5(e) of the Agreement. The phrase "the date that
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is seven (7) months after the Commencement Date" that appears in lines
one and two of Section 5(e) of the Agreement shall be deleted and
replaced with the following: "July 1, 2000".
1.8 Section 17 of the Agreement. Section 17 of the Agreement is
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hereby deleted in itsentirety and replaced with the following:
17. Additional Obligations. Nothing contained in the Agreement
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or the Amendment shall be construed to prohibit Licensee from
manufacturing, distributing, marketing, promoting in any
manner, or selling any keratome, whether or not such keratome is
covered by claims of the Licensed Patents or Licensed
Technology.
1.9 Section 18 of the Agreement. Section 18 of the Agreement
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is hereby deleted in itsentirety and replaced with the following:
18. Mold Use and Manufacture. Licensors agree to provide
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Licensee with single cavity limited production molds ("Limited
Production Molds") capable of producing disposable
microkeratomes which are safe and effective for their intended
use. Licensors and Licensee shall share equally in the cost of
manufacturing the Limited Production Molds. In the event the
Limited Production Molds need to be replaced, as determined by
the manufacturer thereof, Licensors and Licensee shall share
equally in the cost of such replacement.
The Licensee shall be solely responsible for the design,
manufacture, engineering, tooling and testing of the dual
cavity, automatic production molds (the "Final Production
Molds") capable of producing disposable microkeratomes which
are safe and effective for their intended use and shall pay
the entire cost thereof, including all unpaid amounts
currently owed therefor. In the event the Final Production
Molds need to be replaced, as determined by the manufacturer
thereof, Licensee shall be solely responsible for the cost of
such replacement.
The Licensors acknowledge and agree that the Final Production
Molds shall be the sole and exclusive property of Licensee.
After the Termination Date (as defined in the Agreement)
Licensee agrees to entertain any reasonable offer from
Licensors for the purchase of the Final Production Molds. If,
after the Termination Date, Licensee receives a bona fide
offer from a licensee of the Licensed Patents or the Licensed
Technology for the purchase of the Final Production Molds (the
"Offer"), Licensee shall notify Licensors of the existence and
terms and conditions of the Offer. Licensors shall have ten
(10) days after receipt of such notice from Licensee to notify
Licensee that Licensors desire to purchase the Final
Production Molds on the same terms and conditions as set forth
in the Offer. If Licensors fail to notify Licensee within said
ten (10) day period, Licensors shall be deemed to have elected
not to exercise its option hereunder. Licensee shall then be
free to accept the Offer, but only from such prospective
purchaser and in strict accordance with the terms and
conditions of the Offer. In no event and under no
circumstances shall Licensee or LaserSight sell or transfer
the Final Production Molds to any person or entity to whom or
which Licensors have not granted a license to the Licensed
Patents or Licensed Technology.
1.10 Section 19 of the Agreement. Section 19 of the Agreement is
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hereby deleted in its entirety and replaced with the following:
19. Return of Molds. Within fifteen (15) days following the
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Termination Date, Licenseeshall return the Limited Production
Molds to Licensors.
1.11 Section 21 of the Agreement. The parenthetical phrase
"(other than claims arising in connection with the design, engineering,
and/or the specifications of the Devices delivered pursuant to Section
4(f))" that appears in lines 4, 5 and 6 of Section 21 of the Agreement
is hereby deleted.
2. Royalty Shares.
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2.1 Issuance of Royalty Shares. On the Amendment Date,
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LaserSight shall send its transfer agent an irrevocable letter of
direction to issue four stock certificates (two in the name of each
Licensor) each representing that number of shares of common stock,
$.001 par value per share ("Common Stock") which shall be determined by
dividing (i) $1,250,000, by (ii) the closing price of Common Stock as
quoted on the Nasdaq National Market (the "NASDAQ") for the trading day
immediately preceding the Amendment Date. The certificates representing
the shares of Common Stock issued in accordance with this Section 2.1
shall be referred to as the "Royalty Shares". Also on the Amendment
Date Licensors shall execute stock powers, in form and substance
satisfactory to LaserSight, providing for the transfer of the Royalty
Shares to LaserSight.
2.2 Escrow of Royalty Shares. The Royalty Shares and the Stock
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Powers shall be delivered to and held in escrow by LaserSight. The
parties acknowledge and agree that during the period the Royalty
Shares, or any part thereof, are being held in escrow, the Licensors
will be entitled to (i) exercise any and all voting and other
consensual rights pertaining to the Royalty Shares or any part thereof,
and (ii) receive and retain any and all dividends and other
distributions paid in respect of the Royalty Shares. The Royalty Shares
shall be released from escrow to the Licensors in accordance with the
terms of Section 3. However, if the Royalty Shares are not released
from escrow to the Licensors in accordance with the terms of Section 3,
the Royalty Shares shall be released from escrow to LaserSight, and
LaserSight is hereby directed to utilize the Stock Powers in order to
transfer the ownership of the Royalty Shares from Licensors to
LaserSight.
2.3 Restricted Shares. The Licensors acknowledge and
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agree that the Royalty Shares (i) are authorized but previously
unissued Common Stock which have not been registered under the
Securities Act of 1933, as amended ("the Act"), or any state securities
laws, (ii) have been acquired for investment purposes only and not with
a view to distribution or resale, (iii) may not be sold or transferred
unless such shares have been registered under the Act and such
applicable state securities laws, or unless in the opinion of counsel
acceptable to LaserSight an exemption from registration is available,
and (iv) the certificates representing such shares shall bear
substantially the following legend:
THE SHARES OF COMMON STOCK REPRESENTED BY THIS CERTIFICATE
HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933, AS
AMENDED (THE "ACT"), OR ANY APPLICABLE STATE SECURITIES LAW
AND MAY NOT BE TRANSFERRED UNTIL (I) A REGISTRATION STATEMENT
UNDER THE ACT AND SUCH APPLICABLE STATE SECURITIES LAWS SHALL
HAVE BECOME EFFECTIVE WITH REGARD THERETO, OR (II) IN THE
OPINION OF COUNSEL ACCEPTABLE TO THE COMPANY, REGISTRATION
UNDER SUCH SECURITIES ACTS AND SUCH APPLICABLE STATE
SECURITIES LAWS IS NOT REQUIRED IN CONNECTION WITH SUCH
PROPOSED TRANSFER.
The Royalty Shares have those registration rights that are more fully
described in that certain Registration Rights Agreement, dated as of
the Amendment Date, substantially in the form which is attached hereto
as Exhibit A.
3. Amendments to Agreement Effective Upon Certain Events. If (i)
during the period commencing on the Amendment Date and ending on April 30,
2000, LaserSight raises at least $15,000,000 in proceeds (the "Capital
Target") through the sale of LaserSight Common Stock; or (ii) Licensee, in its
sole and absolute discretion, elects to make the Initial Payment (as defined
below) even though the Capital Target has not been achieved (provided,
however, such election must be made by Licensee and communicated to the
Licensors prior to April 30, 2000), then the amendments to the Agreement set
forth in Sections 3.1, 3.2, 3.3, 3.4, 3.5 and 3.6 below shall become effective
and Licensee shall be obligated to make the payments described in Sections
3.1, 3.2, 3.3 and 3.4 below. LaserSight acknowledges and agrees that it will
use its reasonable best efforts to reach the Capital Target on or prior to
April 30, 2000.
3.1 Sections 5(a)(i) and 5(a)(iii) of the Agreement. The
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following sentence shall be added at the end of each of Section 5(a)(i)
and 5(a)(iii): "The previous receipt of which is herebyacknowledged."
3.2 Section 5(a)(ii) of the Agreement. Section 5(a)(ii) of the
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Agreement shall be deleted in its entirety and replaced with the
following:
(ii) Within five business days after the earlier of the date on
which the Capital Target is achieved, or the date on which
Licensee has communicated to the Licensors its decision to
make the election described in phrase (ii) of the
first sentence of Section 3 of the Amendment, Licensee shall
(i) wire transfer $4,000,000 U.S. (less the amount of any
Advanced Payments made as of the date of such payment) in
immediately available funds to the Licensors in accordance
with wire transfer instructions provided to Licensee by the
Licensors (the "Initial Payment"), and (ii) direct
LaserSight to release a certificate to each of the Licensors
representing, in the aggregate, one-half (1/2) of the
Royalty Shares.
Notwithstanding the provisions of Section 5(a)(vi), if all
or any portion of the Advanced Payments have not been made
at the time the Initial Payment is made, then once the
Initial Payment is made Licensee shall have no further
obligation to make the Advanced Payments (or unpaid portion
thereof).
3.3 Section 5(a)(iv) of the Agreement. Section 5(a)(iv) of the
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Agreement shall be deletedin its entirety and replaced with the
following:
(ii) Within five business days after the six-month
anniversary of the Amendment Date, Licensee shall (i)
wire transfer $2,000,000 U.S. in immediately available
funds to the Licensors in accordance with wire
transfer instructions provided to Licensee by the
Licensors, and (ii) direct LaserSight to release a
certificate to each of the Licensors representing, in
the aggregate, the remaining one-half (1/2) of the
Royalty Shares.
In addition, within five business days after the
nine-month anniversary of the Amendment Date, Licensee
shall wire transfer $2,000,000 U.S. in immediately
available funds to the Licensors in accordance with
wire transfer instructions provided Licensee by the
Licensors.
3.4 Section 5(a)(v) of the Agreement. During the Initial Term
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only, Section 5(a)(v) of the Agreement shall be deleted in its entirety
and replaced with the following:
(v) ten percent (10%) of the Gross Profits (as
defined in Section 5(a) of the Agreement, as
such Section has been revised by the
Amendment) ("Gross Profit Payment") shall be
paid to the Licensors no later than
forty-five (45) days after the end of each
calendar quarter during the Term.
Following the Initial Term and during any Renewal Term, the
first of which would commence August 1, 2002, if the Agreement is
renewed by Licensee, the payments to Licensors shall be made in
accordance with Section 5(a)(v) of the Agreement (as such Section
existed prior to the amendment contemplated by this Section 3.4), which
Section 5(a)(v) shall be deemed reinstated following the Initial Term
and during any Renewal Term.
3.5 Sections 5(e) and 5(f) of the Agreement. During the
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Initial Term only, Sections 5(e) and 5(f) of the Agreement shall be
deemed deleted in their entirety. Following the Initial Term and during
any Renewal Term, the first of which would commence August 1, 2002, if
the Agreement is renewed by Licensee, Sections 5(e) and 5(f) of the
Agreement shall be deemed reinstated following the Initial Term and
during any Renewal Term.
3.6 Section 20 of the Agreement. During the Initial Term only,
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the words "Minimum Payment Requirement" that appear in line 10 of this
Section shall be deemed deleted and replaced with the words "Gross
Profit Payment."
3.7 Amendments Not Effective in Certain Circumstances.
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If neither of the events described in the first sentence of Section 3
occurs on or prior to April 30, 2000, then (i) amendments contemplated
by this Section 3 shall not become effective and shall be of no further
force or effect, (ii) the terms and conditions of the Agreement (as
amended by Section 1 of this Amendment) will remain in full force and
effect, and (iii) LaserSight shall remove the Royalty Shares from
escrow and utilize the Stock Powers to transfer the Royalty Shares to
LaserSight.
4. No Other Changes. Except as specifically set forth herein, all
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other terms and conditions of the Agreement shall remain in effect as originally
set forth therein.
5. Counterparts. This Amendment may be executed in one or more
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counterparts, each of which shall be deemed an original and all of which shall
be deemed one and the same instrument.
6. Governing Law. The validity, formulation, interpretation
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and performance of this Amendment shall be governed by the laws of the State of
Virginia, without giving effect to choice of law principles. The parties do
hereby irrevocably submit themselves to the personal jurisdiction of the United
States Federal Court for the Eastern District of Virginia and do hereby
irrevocably agree to service of such court's process upon them, and with respect
to the Licensors, on their counsel, Xxxxx X. Xxxxxxxxxxx of Xxxxxxxx &
XxXxxxxxxx, so long as they remain counsel to the Licensors and thereafter until
such time as it is verified to Licensee in writing that the Licensors' successor
counsel has agreed to accept such service on the Licensors' behalf.
7. Outside Date for Execution of Amendment. Unless this Amendment
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has been duly authorized and executed by Licensee and LaserSight and submitted
to Licensors for signature by 5:00 o'clock P.M. Richmond, Virginia time, on
January 18, 2000, this Amendment shall be of no effect and the Agreement shall
remain in effect as it presently exists, without this Amendment.
[Remainder of Page Intentionally Left Blank]
IN WITNESS WHEREOF, the parties hereto, by their respective duly
authorized officers, have executed this Amendment as of the date first written
above.
LICENSORS: XXXX X. XXXX, M.D.
/s/Xxxx X. Xxxx, M.D.
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Xxxx X. Xxxx, M.D.
XXXXXX XXXXXXX
/s/Xxxxxx Xxxxxxx
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Xxxxxx Xxxxxxx
LICENSEE: LASERSIGHT TECHNOLOGIES, INC.
By: /s/Xxxxxxx X. Xxxxxx
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Xxxxxxx X. Xxxxxx
President
The undersigned hereby unconditionally guarantees the payment of the
sums described in Section 2 of this Amendment as and when such sums become due
and payable according to the terms thereof. In case of failure of Licensee to
pay the obligations guaranteed hereby, the undersigned agrees to cause such
payment to be made as and when the same shall become due and payable, in the
manner specified in this Amendment and as if such payment were made by Licensee.
The undersigned agrees to those terms of the Agreement as amended by this
Amendment which pertain to the performance by the undersigned. This is a
guarantee of payment, not of collection.
LaserSight Incorporated
By: /s/Xxxxxxx X. Xxxxxx
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Xxxxxxx X. Xxxxxx
President and CEO
