Exhibit 10.26
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement") is made and entered into as of
this 17th day of November, 1996, by and between Intelligent Medical Imaging,
Inc., a Delaware corporation ("IMI"), and Xx. Xxxxx Xxxxxxxx ("Xx. Xxxxxxxx"),
La Xxxx, Inc., a Delaware corporation ("La Mina"), and MonoGen, Inc., a Nevada
corporation ("MonoGen") (with Xx. Xxxxxxxx, La Xxxx and MonoGen being
hereinafter collectively referred to as the "Licensors").
RECITALS
A. The Licensors hold all right, title and interest in and to the
Patents, the Monolayer Technology and the Monolayer Products.
B. IMI desires to acquire from the Licensors, and the Licensors
desire to grant to IMI, an exclusive license for the use of the Monolayer
Products and other products in automated image analysis systems for the
preparation of monolayer slides (non-gynecological and gynecological pathology
specimens).
NOW, THEREFORE, in consideration of the obligations herein made and
undertaken, and other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties, intending to be
legally bound hereby, covenant and agree as follows:
1. DEFINITIONS. Whenever used in this Agreement, the following terms
shall have the meanings set forth below:
(a) "Automated System" means any automated image analysis system,
which is defined as an apparatus having an integrated light microscope that
scans microscope slides for both intracellular and extracellular components and
converts the images scanned from the slide into digital or analog data that can
be analyzed utilizing any analytical algorithm. The Micro21 System is an
Automated System.
(b) "Manifold System" means the apparatus to be designed and developed
for use with the Micro21 System in accordance with this Agreement, which
apparatus will utilize a manifold system for the simultaneous preparation and
processing of monolayer preparations and other preparations utilizing the
Monolayer Products, including all related single-use or disposable items used in
connection therewith.
c) "Micro21 System" means IMI's Micro21 System, as the same may be
developed, enhanced, modified, added to or improved from time to time.
(d) "Monolayer Products" means (i) the products and procedures claimed
in the Patents (and any improvements thereto claimed in any future patents)
and/or that are based upon or that utilize the Monolayer Technology, (ii) the
Monolayer Technology, (iii) the Manifold System, (iv) all improvements or
additions to any of the foregoing, (v) all components and parts of any of the
foregoing and (vi) all ancillary reagents, materials, and devices used in
connection with any of the foregoing.
(e) "Monolayer Technology" means the inventions claimed in or covered
by the Patents and any improvements or additions thereto claimed in any future
patents.
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(f) "Patents" means U.S. patent numbers 5,471,994 and 5,301,685, and
any future patents related to, encompassing or underlying the Monolayer
Products.
2. LICENSE. The Licensors hereby grant to IMI the exclusive worldwide
perpetual license (the "License") conveying all rights to use and sell (but not
to manufacture (except as provided in Section 6 of this Agreement)) the
Monolayer Products for preparing or processing diagnostic microscope slides or
any transport vehicle for use with Automated Systems. The License shall also be
deemed to include the transfer to IMI of all of the Licensors' rights under the
Patents as such rights relate to the use of the Monolayer Products in connection
with any Automated Systems, including, without limitation, the right to
maintain, prosecute and defend such Patents and all follow on, continuation,
improvement and other new and related patents and improvements to the Monolayer
Products. Title and ownership in the Patents shall be retained by the Licensors
(specifically, Xx. Xxxxxxxx and La Mina), subject to the terms of this
Agreement.
IMI shall pay for all future costs to maintain, prosecute and defend
the Patents (collectively, "Patent Costs"); provided that in the event that
Licensor sells any Monolayer Product to any person or entity other than IMI, or
grants any right to use, sell, manufacture or have manufactured any Monolayer
Product to any person or entity other than IMI, then Licensor shall thereafter,
upon IMI's demand, pay to IMI an amount equal to [ * ] of all ongoing Patent
Costs. Licensor shall at all times provide IMI with all information, cooperation
and materials necessary to maintain, prosecute and defend the Patents and to pay
all Patent Costs. In the event that IMI does not pay all Patent Costs as
provided above, Licensor shall have the right to terminate the License upon
written notice to IMI; provided, however, that (i) Licensor gives IMI written
notice of such failure and IMI does not cure such failure within a period of
ninety (90) days from and after the date IMI receives such notice and (ii)
Licensor has at the time of such notice paid [ * ] of all Patent Costs as
provided above.
In the event that IMI decides not to pay the Patent Costs at any time,
IMI shall notify the Licensors of such decision in a manner and at a time
sufficient to prevent the loss of rights associated with the Patents.
3. RESEARCH & DEVELOPMENT CONTRACTS.
(a) In connection with this Agreement, the Licensors and IMI agree to
use good faith best efforts to enter into Research & Development Contracts (each
an "R&D Contract") pursuant to which the Licensors shall develop and, if
necessary, modify the Monolayer Products and their devices and components for
commercial use with respect to the performance of certain diagnostic procedures
on the Micro21 System. IMI shall submit proposals for specified procedures. Each
R&D Contract shall include specific performance and design requirements and
specifications, as well as milestones and completion dates (to be discussed and
determined on case by case basis) and related installment payments for the
compensation to be paid by IMI to the Licensors for each procedure.
(b) IMI's proposals shall specify the procedure(s) contemplated and
required specifications and performance characteristics. The Licensors shall
develop the appropriate device or devices to "optimize" throughput and
readability for use with the Micro21 System. The Licensors shall also develop
and optimize the appropriate fixers and reagents for throughput, reliability,
stability, readability and accuracy.
(c) In the event the Licensors and IMI do not reach an agreement and
fail to execute an R&D Contract as to a specified procedure within sixty (60)
days after IMI's submission of a proposal or, with respect to the proposed
completion of the design of the "Manifold System" described in Section 4 below,
if the parties do not enter into an R&D Contract with respect to the Manifold
System within sixty (60) days after the date of this Agreement, then IMI shall
be free and shall have the full right and authority and shall have all rights
necessary to perform, and to engage a third party to perform, the development
and/or design work (including development or design work in connection with the
Manifold System); provided that any third party developer
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(each a "Third Party Developer") shall not have any rights to use the
technology, other than the right to perform the development or design work for
IMI under a research and development contract. The rights to any modifications
or improvements to the Monolayer Products or the Manifold System made by any
Third Party Developer shall belong to the Licensors, and IMI shall have the full
right to use and sell such modifications and improvements pursuant to the
License. The Licensors shall retain manufacturing rights as contemplated herein
(subject to the contingent grant of manufacturing rights under Section 6
herein), with respect to procedures developed by any Third Party Developers.
(d) The Licensors hereby grant to IMI the exclusive right, pursuant to
the License, to use and sell all of the Monolayer Products (and all components
thereof), fixers and reagents developed by the Licensors (or any of them) under
any R&D Contract or developed by IMI or by any Third Party Developer, including
all applicable present and future patents and patent rights, for use with
Automated Systems. IMI shall retain all rights to the Micro21 System, including
any improvements or modifications to the Micro21 System developed by the
Licensors or any of their affiliates or agents (collectively, "Improvements"),
and the Licensors each hereby expressly transfer, assign and convey all of their
rights in or to the Improvements to IMI. The Licensors shall retain the right to
sell the Monolayer Products, fixers and reagents (other than disposables
developed for use in connection with the Manifold System) for use with
applications other than in connection with or with respect to Automated Systems.
(e) The first procedure to be fully developed by the Licensors shall
be monolayer preparation for urine cytology. The R&D Contract with respect to
urine cytology and other procedures shall include the following payment terms:
(i) Initial nonrefundable payment of $150,000 payable upon
execution of the initial R&D Contract for urine cytology and delivery of the
"Manufacturing Documentation" (as defined in Section 6(b) herein).
(ii) Subject to Section 3(e)(iii), $350,000 shall be paid by IMI
upon IMI's receipt of FDA 510(k) clearance for use of the Micro21 System (as
substantially equivalent to the manual procedures) with respect to the use of
the Monolayer Products for monolayer preparation for urine cytology (in
connection with hematuria and red cell counting, uroepithial atypical
identification (not classification), and capture and presentation of "casts" and
crystals) (the "Micro21 Urine Cytology 510(k) FDA Clearance").
(iii) The $350,000 payment referred to in Section 3 (e)(ii) shall
be applied by IMI and the Licensors to IMI's initial payment obligations under
any R&D Contracts (including the initial contract for urine cytology to the
extent the development expense under such initial R&D Contract exceeds $150,000)
entered into during the first year following the date of this Agreement. The
Licensors shall promptly after execution of this Agreement submit a proposal for
the R&D Contract for urine cytology, including the Licensors' proposed cost of
development to be paid by IMI. Notwithstanding the foregoing, in the event the
payment has not been made under Section 3(e)(ii) within such one-year period and
provided IMI does not elect to terminate this Agreement during such one-year
period (and it remains in effect), then IMI shall pay the $350,000 payment to
the Licensors on the third business day following the anniversary of the date of
this Agreement.
4. MANIFOLD SYSTEM. IMI acknowledges that the Licensors are working on
a design for a Manifold System. The Licensors shall promptly after execution of
this Agreement submit a proposal for completion of the design and development of
the Manifold System for use with the Micro21 System, including the Licensors'
proposed cost of design and development to be paid by IMI. The Licensors shall
complete the design and development of the Manifold System pursuant to an R&D
Contract entered into by the parties with respect thereto, provided, if the
Licensors and IMI fail to enter into such an R&D Contract within the time period
specified in Section 3(c), then IMI shall have the right to design and develop,
and to engage a Third Party Developer to design
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and develop, the Manifold System as provided in Section 3(c). To the
extent the Manifold System is designed for use with or by any Automated System
and/or as an integrated part of the Micro21 System, the Licensors hereby grant
to IMI the exclusive right, pursuant to the License, to use and sell, including
an assignment of all applicable present and future patent rights, but not the
right to manufacture (subject to the contingent grant of manufacturing rights
under Section 6 herein) the Manifold System. The Manifold System shall be deemed
to be one of the Monolayer Products for the purposes of this Agreement and the
License. The Licensors hereby grant to IMI the first right to negotiate a
license or other grant of rights with respect to any enhancement, improvement or
further development of the Manifold System.
5. LICENSE FEE. The license fee to be paid to the Licensors by IMI
under this Agreement shall consist of (a) the cash payment contemplated under
Section 3(e)(i) for services to be rendered by the Licensors as contemplated in
Section 3 herein, and (b) Three Million Dollars ($3,000,000), payable in any
combination of cash or IMI common stock ("Shares"), as determined by IMI in its
sole discretion (the "Additional Payment"). The number of Shares included in the
Additional Payment shall be based upon the average closing price of the Shares
on the twenty (20) trading days prior to the date the Additional Payment is paid
by IMI. The Additional Payment shall be paid by IMI within five (5) business
days after IMI's receipt of FDA 510(k) clearance or other FDA approval for the
sale of Micro21 Systems incorporating or sold in conjunction with Monolayer
Products. In the event FDA clearance is not required, the Additional Payment
shall be paid within five (5) business days after actual commercial retail sales
of Micro21 Systems that incorporate or are sold in conjunction with Monolayer
Products. IMI, but not the Licensors, shall have the right to terminate this
Agreement at any time without cause and without liability upon written notice to
the Licensors, provided that this right to terminate without cause shall expire
on the earlier of (i) the date of IMI's receipt of FDA 510(k) clearance for
Micro21 Systems incorporating or sold in conjunction with Monolayer Products,
(ii) the first anniversary of the date of this Agreement or (iii) commercial
retail sales by IMI of Monolayer Products. IMI shall grant to the Licensors
"piggyback" registration rights in connection with any Shares issued to the
Licensors (which rights shall be comparable to any "piggyback" registration
rights granted to IMI's existing stockholders) pursuant to a registration rights
agreement mutually agreed to by the parties (and if necessary the other
shareholders of IMI).
6. MANUFACTURING RIGHTS.
(a) The Licensors hereby agree to manufacture and deliver, and cause
and require their third party contractors to manufacture and deliver, such
quantities of the Monolayer Products, including all components thereof and the
related fixers and reagents, as may be requested or specified from time to time
by IMI. All such manufacturing and delivery (i) shall be performed and completed
in strict conformance with (A) all of IMI's commercially reasonable (in the
medical device industry) specifications and requirements, including, without
limitation, those related to time of delivery, volume, design, appearance,
performance and pricing and (B) the terms and conditions of all applicable IMI
purchase orders, and (ii) shall strictly comply with all Good Manufacturing
Practices ("GMP") required or promulgated by the FDA from time to time (with all
of the foregoing requirements being hereinafter referred to as the
"Manufacturing Requirements"). IMI shall at all times have the right of audit,
use and access to the manufacturing data (including component supplier contact
information), facilities and know-how of the Licensors and their third party
manufacturing contractors, for the sole purpose of confirming that the Licensors
or their contractors are complying with all Manufacturing Requirements.
(b) With respect to the Monolayer Products, in the event the Licensors
or their contractors at any time fail to perform their obligations with respect
to manufacturing and delivery of any of the Monolayer Products (including,
without limitation, failure to fully comply with the Manufacturing
Requirements), then IMI shall have, in addition to all other rights granted to
IMI under this Agreement, the right to manufacture or cause to be manufactured
such Monolayer Products and all components thereof and the related disposables,
fixers and reagents. With respect to the Manifold System, in the event the
Licensors abandon their development effort, or in the event the Licensors or
their third party contractors fail to produce a working prototype ready for beta
site
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testing within six (6) months of the date of this Agreement, or fail
to perform their obligations with respect to manufacturing and delivery of the
Manifold System (including without limitation failure to fully comply with the
Manufacturing Requirements), then IMI shall have, in addition to all other
rights granted to IMI under this Agreement, the right to manufacture or cause to
be manufactured the Manifold System and all components thereof and all related
disposables. The intent of the parties is that the Licensors shall be
responsible for the manufacturing the Monolayer Products, fixers and reagents
and the Manifold System, however, the foregoing contingent manufacturing rights
are necessary to ensure that IMI shall not be precluded from full exercise of
its rights to use and sell the Monolayer Products, fixers and reagents and the
Manifold System. In this regard, the Licensors shall, on the date of this
Agreement, deliver to IMI copies of all relevant manufacturing data and
component supplier and third party manufacturing contractor contact information
and know-how and specifications which would be necessary for IMI's independent
exercise of its contingent manufacturing rights, including without limitation
such documentation relating to the Urine Cytology procedure (the "Manufacturing
Documentation"). Throughout the term of this Agreement, at the request of IMI or
upon any material change in the Manufacturing Documentation or creation of new
Manufacturing Documentation covering any of the Manifold System or Monolayer
Products, fixers or reagents, the Licensors shall promptly deliver any updates
or modifications of the Manufacturing Documentation to IMI. IMI shall not use
such Manufacturing Documentation except in connection with the exercise of its
contingent manufacturing rights.
7. TRANSFER PRICES.
(a) IMI shall pay the Licensors a unit transfer price for each
of the Monolayer Products and the Manifold Systems manufactured by the Licensors
and delivered to IMI equal to [ * ]. Transfer prices shall be paid on
a calendar quarterly basis based upon the amounts actually collected by IMI
during the immediately preceding calendar quarter; provided, however, to the
extent IMI does not collect any amount due with respect to a product within
ninety (90) days after the product is shipped to the customer, the price charged
for such product shall be added to the actually collected amounts in the
calendar quarter in which such ninety (90) day period ends. The transfer prices
may be modified by mutual written consent to adjust for factors beyond the
control of IMI or the Licensors, such as excessive cost for a reagent. All
retail or negotiated prices for said products shall be set, and may be changed
from time to time, by IMI in its sole discretion.
(b) If IMI assumes the contingent manufacturing rights to
manufacture any Monolayer Products or the Manifold System as described in
Section 6, IMI shall pay a royalty of [ * ]. Royalties shall be paid
on a calendar quarterly basis based upon amounts actually collected by IMI
during the immediately preceding calendar quarter.
(c) Upon reasonable notice, IMI and its representatives shall
have the reasonable right to audit, access and inspect the books, records and
facilities of the Licensors for purposes of confirming the Licensors' production
costs and compliance with the Manufacturing Requirements. Upon reasonable
notice, the Licensors shall have the reasonable right to audit, access and
inspect the books and records of IMI for purposes of confirming IMI's net sales
of Monolayer Products and Manifold Systems under Sections 7(a) or 7(b) above.
8. MINIMUM PURCHASES FOLLOWING FIRST YEAR. Upon the completion of the
first year of commercial sales of the Monolayer Products under this Agreement,
and provided IMI has not terminated this Agreement, IMI shall enter into good
faith negotiations with the Licensors with respect to the minimum number of
Monolayer Products covered under the License to be ordered by IMI.
9. ANNOUNCEMENTS; CONFIDENTIALITY.
(a) The parties hereto acknowledge that IMI is a public reporting
company and that the matters covered by this Agreement are and shall remain
confidential. The parties hereto agree that they shall not
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make any announcement to the press or to any third parties about this
Agreement, the terms hereof or the transactions contemplated hereby without the
prior written approval of all parties.
(b) All IMI Information (i) shall be and at all times remain the sole
and exclusive property of IMI, (ii) shall not be used by the Licensors for any
reason or purpose except in direct connection with the Licensors' performance of
their duties and obligations under this Agreement and (iii) shall not, without
the express prior written consent and approval of IMI, be disclosed in whole or
in part to any person or entity. For the purposes of this Agreement, "IMI
Information" shall mean and include all information, materials or documents in
any way regarding or relating to IMI or any of its affiliates or their
respective businesses, whether provided to or obtained by the Licensors,
including, without limitation, all customer lists, all technical data, research
or information and all trade secrets and other proprietary ideas, concepts,
know-how and methodologies. The Licensors acknowledge that money damages would
be an inadequate remedy for the injuries and damage that would be suffered by
IMI in the case of the Licensors' breach of this Section 9(b). Therefore, IMI,
besides any other remedies it may have at law or in equity, shall be entitled to
injunctive relief to enforce the provisions of this Section 9(b). The Licensors'
respective duties and obligations under this Section 9(b) shall survive the
termination or cancellation of this Agreement for any reason.
(c) All Licensor Information (i) shall be and at all times remain the
sole and exclusive property of the Licensors, (ii) shall not be used by IMI for
any reason or purpose except in direct connection with IMI's performance of its
duties and obligations under this Agreement and (iii) shall not, without the
express prior written consent and approval of IMI, be disclosed in whole or in
part to any person or entity. For the purposes of this Agreement, "Licensor
Information" shall mean and include all information, materials or documents in
any way regarding or relating to the Licensors or any of their affiliates or
their respective businesses, whether provided to or obtained by IMI, including,
without limitation, all customer lists, all technical data, research or
information and all trade secrets and other proprietary ideas, concepts,
know-how and methodologies. IMI acknowledges that money damages would be an
inadequate remedy for the injuries and damage that would be suffered by the
Licensors in the case of IMI's breach of this Section 9(c). Therefore, the
Licensors, besides any other remedies they may have at law or in equity, shall
be entitled to injunctive relief to enforce the provisions of this Section 9(c).
IMI's duties and obligations under this Section 9(c) shall survive the
termination or cancellation of this Agreement for any reason.
10. NONCOMPETITION.
(a) In recognition of the highly competitive nature of IMI's business,
the Licensors each covenants and agrees that he, she or it shall not, without
the express prior written consent of IMI in each instance (which consent may be
granted or denied by IMI in its sole and unfettered discretion), directly or
indirectly from and after the date of this Agreement and for one (1) year from
and after any termination of this Agreement (i) engage in (whether as an owner,
officer, director, employee, partner, consultant, advisor, agent, sales
representative, distributor, broker, marketing agent, trustee, joint venturer or
otherwise) any business or other activity or activities which are competitive
with the Automated Systems business of IMI, (ii) license to, or otherwise permit
the use, sale, development or manufacture of the Monolayer Products (or any of
them or any portion or component thereof) by any party who shall or could use
the Monolayer Products (or any of them or any portion or component thereof) in
competition with IMI in connection with any Automated System or (iii) assist or
facilitate any other person or entity in engaging in any activities prohibited
to the Licensors under this Section 10(a). The foregoing notwithstanding, and
except in cases where IMI exercises its contingent manufacturing rights as
provided in Section 6(b) above, in the event IMI obtains any reagent or device
ancillary to a Monolayer Product from any party other than Licensor or a
contractor or agent of Licensor, then thereafter Licensor shall be free to sell
such reagent or device to third parties.
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(b) The Licensors each acknowledge and agree that the breach of any of
the provisions of this Section 10 by any of the Licensors shall cause
irreparable harm to IMI which shall not be adequately compensated by monetary
damages. In recognition of this fact, in the event of a breach or threatened
breach of any of the provisions of this Section 10 by any of the Licensors, and
without the showing or proving of actual damages, it is agreed that, in addition
to IMI's remedies at law, IMI shall be entitled to immediate equitable relief in
the form of specific performance, temporary restraining order, temporary or
permanent injunction or any other equitable remedy which may then be available
from any court of competent jurisdiction against the Licensors and any third
parties whose joinder may be necessary to effect a full and complete relief from
such breach or threat of breach. Nothing herein contained shall be construed as
prohibiting IMI from pursuing any other remedies available to it. The Licensors'
respective duties and obligations under this Section 10 shall survive the
termination or cancellation of this Agreement for any reason for one (1) year.
11. DISPUTE RESOLUTION. Except for any claim or action by a party
pursuant to Section 9 or Section 10 of this Agreement, any dispute,
disagreement, controversy or claim arising out of or with respect to this
Agreement (each a "Dispute") that is not resolved by the agreement of the
parties must be resolved exclusively as set forth below:
(a) All Disputes must first be submitted to non-binding mediation in
Virginia if brought by IMI or in Palm Beach County, Florida if brought by any
Licensor in accordance with the mediation procedures of the American Arbitration
Association (the "AAA"). The parties agree to participate in not less than five
(5) hours of mediation within thirty (30) days after such submission. The
mediator shall be appointed in accordance with the rules of the AAA, but the
mediator must not have any conflict of interest. The mediation proceedings shall
be completely confidential and not discoverable. The mediation procedure shall
be deemed complete with respect to a Dispute if (i) the mediation is completed
and an agreement to resolve the Dispute is entered into by the parties or (ii)
the mediation is completed and the Dispute is not resolved within five (5) days
thereafter. If a party submits a dispute to mediation and the other party fails
to appear or participate in good faith in mediation within thirty (30) days
after having received written notice of the submission of the Dispute, then the
party submitting the Dispute may consider the mediation procedure to be
completed.
(b) If any Dispute remains between the parties after completion of the
mediation process in connection with such dispute, then any party may submit the
Dispute to final and binding arbitration (without appeal or review) in Virginia
if brought by IMI or in Palm Beach County, Florida if brought by any Licensor,
administered by and in accordance with the rules of the AAA. IMI shall appoint
one (1) arbitrator and the Licensors shall together appoint one (1) arbitrator,
and the two (2) arbitrators so selected shall appoint a third arbitrator. Each
arbitrator must be appointed in accordance with the rules of the AAA, and must
not have any conflict of interest. The decision of a majority of the three
arbitrators with respect to any Dispute shall be binding and conclusive upon the
parties to this Agreement. Such decision shall be written and shall be supported
by written findings of fact and conclusions, and shall set forth the award,
judgment, decree or order awarded by the arbitrators. The judgment and any award
rendered by the arbitrators may be enforced under applicable judicial
procedures, including procedures for the entry and enforcement of arbitration
awards by any federal or state court having jurisdiction.
(c) The parties shall share equally the costs, including fees, of any
mediator or arbitrator selected or appointed hereunder, but each party shall
otherwise be responsible for its own fees, costs and expenses in connection with
any Dispute.
(d) The provisions of this Section 11 shall survive the termination or
cancellation of this Agreement for any reason.
12. REPRESENTATIONS AND WARRANTIES.
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(a) The Licensors each hereby represent and warrant to IMI that (i)
the Licensors have the full power and authority to execute and deliver this
Agreement, to perform all of their duties and obligations under this Agreement
and to grant all of the rights granted by this Agreement, (ii) to the best
knowledge of the Licensors, neither the Patents, nor the Monolayer Products nor
the Manifold System, nor IMI's use, sale or manufacture thereof, violates or
infringes the rights of any person or entity in or to any patent, trademark,
trade name, copyright, trade secret, license or other proprietary or similar
right and (iii) the Licensors are the sole and lawful owners of the Patents, the
Monolayer Products, the Manifold System, the components thereof and all rights
therein or ancillary thereto.
(b) IMI represents and warrants to the Licensors that (i) the IMI has
the full power and authority to execute and deliver this Agreement and to
perform all of its duties and obligations under this Agreement, (ii) to the best
knowledge of IMI, the Micro21 System does not violate or infringe the rights of
any person or entity in or to any patent, trademark, trade name, copyright,
trade secret, license or other proprietary or similar right and (iii) IMI is the
lawful owner or licensee of the Micro21 System, the components thereof and all
rights therein or ancillary thereto.
13. INDEMNIFICATION.
(a) In addition to all other remedies available to IMI at law or in
equity, the Licensors each hereby indemnify and agree to defend and hold IMI
harmless from and against any and all fines, suits, proceedings, claims,
demands, causes of action, losses, liabilities, damages, costs, charges and/or
expenses of any kind or nature (including, without limitation, reasonable
attorneys' fees and expenses) arising out of or otherwise relating to or
connected with any actual or threatened claim that any of the Patents, the
Monolayer Products, the Manifold System or any of the components thereof violate
or infringe any patent, trademark, trade name, copyright, trade secret, license
or other proprietary or similar right of any third party. The Licensors'
respective duties and obligations under this Section 13(a) shall survive the
termination or cancellation of this Agreement for any reason.
(b) In addition to all other remedies available to the Licensors at
law or in equity, IMI hereby indemnifies and agrees to defend and hold the
Licensors harmless from and against any and all fines, suits, proceedings,
claims, demands, causes of action, losses, liabilities, damages, costs, charges
and/or expenses of any kind or nature (including, without limitation, reasonable
attorneys' fees and expenses) arising out of or otherwise relating to or
connected with any actual or threatened claim that the Micro21 System or any of
the components thereof (other than any of the Patents, the Monolayer Products,
the Manifold System or any of the components thereof) violate or infringe any
patent, trademark, trade name, copyright, trade secret, license or other
proprietary or similar right of any third party. IMI's obligations under this
Section 13(b) shall survive the termination or cancellation of this Agreement
for any reason.
14. BANKRUPTCY. Notwithstanding any other term or provision of this
Agreement, if any Licensor, or any successor in interest to any Licensor
hereunder, voluntarily seeks protection under or is involuntarily subjected to
the provisions of the Bankruptcy Code, IMI may, at its sole option and
discretion, elect, by written demand to such Licensor or its trustee in
bankruptcy, to retain IMI's rights under this Agreement including, without
limitation, IMI's right to demand: (i) performance of this Agreement; (ii) the
use of all rights or items licensed or sublicensed hereunder to IMI as provided
herein and without interference by Licensor or its trustee in bankruptcy; and
(iii) any other rights available to IMI under Section 365 of the Bankruptcy Code
or any successor section or sections thereto. Failure by IMI to assert its
rights to retain its benefits under this Agreement pursuant to Section
365(n)(1)(B) of the Bankruptcy Code, or any successor section or sections
thereto, under an executory contract rejected during bankruptcy proceedings
shall not be construed by the courts as a termination of this Agreement by IMI
under Section 365(n)(1)(A) of the Bankruptcy Code, or any successor section or
sections thereto.
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15. Notices. No notice or other communication shall be deemed given
unless sent in any of the manners, and to the persons, specified in this
Section. All notices and other communications hereunder shall be in writing and
shall be deemed given (a) upon receipt if delivered personally (unless subject
to clause (b)) or if mailed by registered or certified mail, (b) at noon on the
date after dispatch if sent by overnight courier or (c) upon the completion of
transmission (which is confirmed by telephone or by a statement generated by the
transmitting machine) if transmitted by telecopy or other means of facsimile
which provides immediate or near immediate transmission to compatible equipment
in the possession of the recipient, in any case to the parties at the following
addresses or telecopy numbers (or at such other address or telecopy number for a
party as shall be specified by like notice):
if to IMI:
Intelligent Medical Imaging, Inc.
0000 Xxxxxxxxx Xxxx.
Xxxxx 000
Xxxx Xxxxx Xxxxxxx, 00000
Attention: Xxxx Xxxxxxxxxx
Telecopy Number: (000) 000-0000
Confirmation Number: (000) 000-0000
or if to the Licensors:
Xx. Xxxxx Xxxxxxxx
La Mina, Inc.
MonoGen, Inc.
0000 Xxxxxxx Xxxx
Xxxxxxx, XX 00000
Telecopy Number: (000) 000-0000
Confirmation Number: (000) 000-0000
16. ENUMERATION AND HEADINGS. The enumeration and headings contained
in this Agreement are for convenience of reference only and shall not control or
affect the meaning or construction of any of the provisions of this Agreement.
17. COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which when so executed and delivered shall be deemed an
original, but all of which shall together constitute one and the same agreement.
18. SUCCESSORS AND ASSIGNS. This Agreement and the terms, covenants,
provisions and conditions hereof shall be binding upon, and shall inure to the
benefit of, the respective heirs, successors and assigns of the parties hereto;
provided, however, that the Licensors shall not subcontract or assign this
Agreement (by operation of law or otherwise), or otherwise sell, assign,
transfer, convey or dispose of all or any portion of their right, title or
interest herein, to any person or entity without the express prior written
consent of IMI.
19. SEVERABILITY. If any provision of this Agreement is held to be
invalid or unenforceable for any reason, such provision shall be conformed to
prevailing law rather than voided, if possible, in order to achieve the intent
of the parties and, in any event, the remaining provisions of this Agreement
shall remain in full force and effect and shall be binding upon the parties
hereto.
20. WAIVER. All rights available to either party under this Agreement
or any other document delivered hereunder or in connection herewith, or allowed
it by law or equity, are and shall be cumulative and may
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be exercised separately or concurrently and from time to time without
waiver of any other remedies. No party hereto shall be deemed to have waived any
right, power or privilege under this Agreement unless such waiver shall have
been expressed in a written instrument signed by the waiving party. The failure
of any party hereto to enforce any provision of this Agreement shall in no way
be construed as a waiver of such provision or a right of such party to
thereafter enforce such provision or any other provision of this Agreement.
21. ENTIRE AGREEMENT. This Agreement embodies the entire agreement and
understanding of the parties hereto with respect to the subject matter hereof
and supersedes all prior and contemporaneous agreements and understandings, oral
or written, relating to said subject matter.
22. TERMINATION. If any Licensor breaches this Agreement, IMI shall be
entitled, without limitation as to any other available remedy, at its option and
to the extent it so elects to terminate this Agreement, any such termination not
to relieve the Licensors of any of their obligations under this Agreement.
Except as otherwise provided in this Agreement, if IMI breaches this Agreement,
the Licensors shall be entitled, without limitation as to any other available
remedy, at their option and to the extent they so elect to terminate this
Agreement, any such termination not to relieve IMI of any of its obligations
under this Agreement.
23. NAMES. The Licensors shall not use IMI's or any of IMI's
affiliates' names, marks, logos or other designations for any reason (including,
without limitation, advertising, publicity and promotional materials) without
IMI's express prior written consent in each instance, and all such names, marks,
logos and other designations of IMI shall at all times be and remain the sole
and exclusive property of IMI. IMI shall not use any Licensor's or any of such
Licensor's affiliates' names, marks, logos or other designations for any reason
(including, without limitation, advertising, publicity and promotional
materials) without such Licensor's express prior written consent in each
instance, and all such names, marks, logos and other designations of such
Licensor shall at all times be and remain the sole and exclusive property of
such Licensor.
24. GOVERNING LAW. This Agreement and the respective rights and
obligations of the parties hereto shall be governed by and construed in
accordance with the laws of the State of Florida, without regard to its
conflicts of laws provisions.
25. CONSTRUCTION. Unless the context of this Agreement otherwise
clearly requires, (i) references in this Agreement to the plural include the
singular, the singular the plural, the masculine the feminine, the feminine the
masculine and the part the whole and (ii) the word "or" shall not be construed
as exclusive and the word "including" shall not be construed as limiting. The
Licensors shall be jointly and severally liable with respect to their respective
duties and obligations under this Agreement.
26. AMENDMENT. This Agreement may not be amended or modified in any
manner except by a written agreement executed by each of the parties hereto.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the day and year first above written.
INTELLIGENT MEDICAL IMAGING, INC.
By: /s/ Xxxx X. Xxxxxxxxxx
----------------------------
Xxxx X. Xxxxxxxxxx, President
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MONOGEN, INC.
By: /s/ Xxxxx Xxxxxxxx
------------------------------
Xx. Xxxxx Xxxxxxxx, President
LA MINA, INC.
By: /s/ Xxxxx Xxxxxxxx
-----------------------------
Xx. Xxxxx Xxxxxxxx, President
/s/ Xxxxx Xxxxxxxx
------------------------------
Xx. Xxxxx Xxxxxxxx, Individually
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