EXHIBIT 10.56
TECHNOLOGY PURCHASE AGREEMENT
THIS TECHNOLOGY PURCHASE AGREEMENT ("Agreement") is made as of March 8,
2000, by and between LASERSIGHT TECHNOLOGIES, INC., a Delaware corporation
("Buyer"), and PREMIER LASER SYSTEMS, INC., a California corporation and its
wholly-owned subsidiary EYESYS-PREMIER, INC., a Delaware corporation
(collectively, "Seller").
RECITALS
A. Seller desires to sell to Buyer, and Buyer desires to
purchase from Seller, certain assets comprising and related to Seller's corneal
topography/wave front aberration measurement system currently under development
and referred to as Topomax (collectively, the "Topomax System"), upon the terms
and conditions set forth herein.
B. In connection therewith, Buyer and Seller desire to enter into
certain other agreements and covenants as set forth herein.
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants of the parties hereinafter expressed, it is hereby agreed as follows:
SECTION 1
PURCHASE AND SALE OF ASSETS
1.1 Purchased Assets and Excluded Assets.
(a) Purchased Assets. Subject to the terms and conditions
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hereof, on the Closing Date (as hereinafter defined), Seller agrees to
sell, transfer, assign and deliver to Buyer and Buyer agrees to
purchase from Seller the following:
(i) all interests of Seller in (A) any prototype of
the Topomax System, (B) computer disks or CD Roms
that contain information related to the Topomax
System downloaded from Seller's computers or computer
system, and (C) all tangible personal property,
including, but not limited to, all furniture,
fixtures, computer hardware, equipment and supplies
which at any time have been utilized solely in
connection with the development of the Topomax System;
(ii) all interests of Seller in existing versions of
the Topomax System related computer software
(including object code and source code, in machine
readable and listing form) operating systems,
application programs, routines and subroutines,
screen displays, user interfaces and machine
interfaces, Topomax System documentation, and all
files and records pertaining to the conception and
reduction to practice of the same, including, but not
limited to, the right to use and modify (solely for
purposes of developing and commercializing the
Topomax System) such items that are utilized in
Seller's EyeSys line of products;
(iii) all Seller's right, title and interest to other
Topomax System related technology and know-how,
including, but not limited to, all algorithms,
patents, copyrights, tradenames, trademarks,
servicemarks, registered or unregistered, including
applications and registrations therefor and any
reissues, divisionals, continuations or
continuations-in-part thereof, trade secrets,
confidential business information (including ideas,
formulas, compositions, supplier and customer lists,
inventions, know-how, manufacturing and production
processes and techniques, research and development
information, drawings, designs, plans, proposals and
technical data, financial, marketing and business
data, pricing and cost information) and other Topomax
System related intellectual property rights; and all
of Seller's right, title and interest in and to any
third-party software (to the extent transferable) or
other technology which has been incorporated in the
Topomax Intellectual Property (as defined herein),
utilized by Seller in connection with the development
of the Topomax System at any time prior to or as of
the Closing Date, including, but not limited to, all
files, records and documentation pertaining to the
conception, development and reduction to practice of
the inventions claimed in the Topomax Intellectual
Property and those items more specifically described
on Schedule 1.1(a)(iii) hereto (collectively, the
"Topomax Intellectual Property");
(iv) all of Seller's goodwill associated with the
Topomax System and all causes of actions related to
the Topomax Intellectual Property, including, but not
limited to, all rights of recovery to past, present
and future infringement of the Topomax Intellectual
Property; and
(v) copies or originals of all Seller's books,
records, ledgers, files, documents, correspondence,
lists, plats, drawings, creative materials,
advertising and promotional materials, studies,
reports and other printed or written materials used
by Seller relating to the Topomax System.
All of the assets of Seller to be purchased by Buyer hereunder are
herein sometimes collectively referred to as the "Purchased Assets."
(b) Excluded Assets. The parties acknowledge and
agree that Buyer is acquiring hereunder only those assets or rights
which are defined herein, collectively, as the Purchased Assets and
that the Purchased Assets expressly exclude all other assets of Seller
which do not relate to the Topomax Field (as defined in the Premier
License (as defined herein)).
(c) Discovered Assets. If after the Closing, Buyer or
Seller discovers any Purchased Assets that were not previously
transferred to Buyer (each such item a "Discovered Asset"), such
Discovered Asset shall be deemed to have been a component of the
Purchased Assets. The party which discovers the Discovered Asset shall
promptly provide the other party with written notice briefly describing
the Discovered Asset. Seller hereby agrees to deliver to Buyer or its
permitted assigns such consents, documents and instruments and to take
such other actions, as may be required for the purpose of providing
Buyer with all of Seller's right, title and interest in the Discovered
Asset. If Buyer is unable for any reason to secure a signature from an
authorized officer or agent of Seller for such consents, documents and
instruments necessary to carry out the terms set forth in this Section
1.1(c), Seller does hereby irrevocably designate and appoint Buyer and
its authorized officers and agents as Seller's agent and
attorney-in-fact, to act for and in Seller's behalf and stead to
execute such items, with the same legal effect as if executed by
Seller.
1.2 Liabilities and Obligations Are Not Being Assumed. Buyer wil
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not assume, and will not be deemed to have assumed any liabilities of Seller,
whether fixed, contingent or unliquidated, whenever arising prior to the date of
the Closing or thereafter. Without limiting the foregoing, Buyer does not assume
and shall not be obligated to pay or satisfy any obligation, debt or liability,
contingent or otherwise, of Seller, including without limitation, any liability
for taxes, whether measured by income, sales or otherwise.
1.3 Purchase Price. In addition to the consideration in the form of
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the license granted to Seller as described below, the aggregate consideration
(the "Purchase Price") to be paid by Buyer to Seller (or to such party as Seller
shall direct) for the Purchased Assets shall be $4,050,000 which shall be
payable as follows:
(a) on the Closing Date (as defined herein) $2,825,000
shall be delivered to Seller by wire transfer of immediately
available funds to such accounts as shall be designated by Seller prior
to the Closing;
(b) on the date which is 30 days after the Closing Date $500,000
shall be delivered to Seller by wire transfer of immediately
available funds to such account as shall be designated by
Seller; and
(c) on the date which is 60 days after the Closing Date
$725,000 shall be delivered to Seller by wire transfer of
immediately available funds to such account as shall be designated by
Seller.
Seller acknowledges and agrees that the payments described in Section
1.3(b) and (c) shall be subject to set-off for Seller's indemnification
obligations as described in Section 7.3 of this Agreement. In addition, if any
of the sale of the Purchased Assets to Buyer, the LaserSight License (as defined
herein), the termination of the ▇▇▇▇▇▇ Agreements (as defined herein) or the
release of ▇▇▇▇▇ ▇▇▇ ("Liu") contemplated by Section 4.1 is being challenged (or
an official committee or any party with standing threatens to challenge such
transaction) on any basis as a result of Seller filing for protection under any
bankruptcy or insolvency statute or rule, then the payments described in Section
1.3(b) and (c), to the extent such payments have not already been made, shall
not be made until approval of all such transactions. If such a challenge or
threat occurs and such approval is not received, then Buyer shall not be
obligated to make either of the payments described in Section 1.3(b) and (c), to
the extent such payments have not already been made, and Buyer shall be repaid
all amounts previously paid by Buyer to Seller, and upon such repayment Buyer
shall return the Purchased Assets to Seller to the extent Buyer has been repaid.
The existence of, or outcome related to, any such challenge or threat which
occurs after the Closing Date will not affect the fact that all right, title and
interest to the Purchased Assets transferred to Buyer at the Closing.
1.4 Closing. The closing of the transactions contemplated by this
Agreement (the "Closing") shall take place on March 8, 2000 if the conditions
set forth in Sections 5 and 6 have been satisfied, or as soon thereafter as such
conditions have either been satisfied or waived by the party benefiting from
such conditions, at the offices of Buyer, or at such other place as the parties
shall agree (the "Closing Date"), and shall be effective as of 12:01 a.m. on the
Closing Date.
At the Closing, Seller shall execute and deliver to Buyer appropriate
instruments of assignment, transfer and conveyance and such other documents as
Buyer or its counsel shall reasonably request to transfer to Buyer title to and
right to possession of the Purchased Assets, free and clear of any liens,
claims, security interests or encumbrances.
SECTION 2
REPRESENTATIONS, WARRANTIES AND COVENANTS OF SELLER
Seller hereby represents and warrants to Buyer as of the Closing Date
as follows. In connection with the following representations and warranties, to
the extent any representation or warranty is made "to Seller's knowledge" such
phrase shall mean the knowledge of ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇▇ or
▇▇▇▇▇▇ (as defined herein).
2.1 Corporate Organization. Seller is a corporation duly
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organized, validly existing and in good standing under the laws of the
jurisdiction of its incorporation, with all requisite power and authority
(corporate and other) to own its properties and assets and to conduct its
business as now conducted.
2.2 Corporate Authority. As of the Closing Date, Seller will have
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the corporate power to enter into this Agreement and to carry out its
obligations hereunder. As of the Closing Date, the execution and delivery of
this Agreement and all agreements contemplated hereunder and the performance of
Seller's obligations hereunder and thereunder, will have been duly authorized by
the Board of Directors of Seller, and no other corporate proceedings on the part
of Seller will be necessary to authorize such execution, delivery and
performance. This Agreement and all agreements contemplated hereunder have been
duly executed by Seller and, as of the Closing Date, will constitute valid and
legally binding obligations of Seller, enforceable against Seller in accordance
with the terms hereof and thereof, except to the extent that such enforcement
may be subject to bankruptcy, insolvency, reorganization, moratorium or other
similar laws now or hereafter in effect relating to creditors' rights generally,
and the remedy of specific performance and injunctive and other forms of
equitable relief may be subject to equitable defenses and to the discretion of
the court before which any proceeding therefore may be brought.
2.3 No Violation. Neither the execution, delivery nor the
performance by Seller of this Agreement and all agreements contemplated
hereunder violates or will violate any provision of law, of any order, judgment
or decree of any court or other governmental or regulatory authority, or of the
charter documents or by-laws of Seller, nor violates or will result in a breach
of or constitute (with due notice or lapse of time or both) a default under any
contract, lease, loan agreement, mortgage, security agreement, trust indenture
or other agreement or instrument to which Seller is a party or by which it is
bound or to which any of its properties or assets is subject, nor will result in
the creation or imposition of any lien, charge or encumbrance of any kind
whatsoever upon any of the properties or assets of Seller. Seller has not issued
any preferred stock nor does there exist any shareholders agreement relating to
Seller's capital stock. The transactions contemplated by this Agreement will not
violate any term or condition of any shareholders' agreement, bond, indenture,
contract or other instrument or require any consent thereunder.
2.4 Consents and Approvals. No consent, waiver, authorization, or
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approval of any governmental or regulatory authority, domestic or foreign, or of
any other person, firm or corporation, and no declaration to or filing or
registration with any such governmental or regulatory authority, is required in
connection with the execution and delivery of this Agreement by Seller or the
performance by Seller of its obligations hereunder, except that an assignment
form will have to be filed with the United States Patent and Trademark Office to
record the transfer of the Topomax Patents (as defined on Schedule 1.1(a)(iii)).
2.5 Litigation. There are no claims, actions, suits, proceedings,
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disputes or investigations pending or, to Seller's knowledge, threatened before
any federal, state or local court or governmental or regulatory authority,
domestic or foreign, or before any arbitrator of any nature, brought by or
against Seller involving, affecting or relating to the Purchased Assets or the
transactions contemplated by this Agreement. Neither Seller nor the Purchased
Assets is subject to any order, writ, judgment, award, injunction or decree of
any federal, state or local court or governmental or regulatory authority or
arbitrator.
2.6 Title. As of the Closing Seller is the sole owner of all right,
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title and interest in and to the Purchased Assets. Buyer acknowledges that it
has reviewed the disclosure set forth on Schedule 2.6 and understands the nature
of the confirmatory assignments described therein. Buyer acknowledges that
certain of Seller's ownership rights to the Purchased Assets derive from the
▇▇▇▇▇▇ Agreements. Seller does not have any subsidiaries or affiliates that have
any rights or interests, directly or indirectly, in any of the Purchased Assets.
Seller has the legal right to transfer the Purchased Assets as set forth in this
Agreement, and Seller has not executed any agreement which is in conflict with
the terms of this Agreement. The intellectual property assignments which have
been granted by Seller in favor of Strong River Investments, Inc. ("SRI") and
Herkimer LLC ("Herkimer") have been granted as collateral security interests
only and do not constitute an absolute assignment of such intellectual property.
Except for the intellectual property assignments which have been granted to SRI
and Herkimer, there are no other purported liens or assignments which encumber
the Purchased Assets.
2.7 Topomax Intellectual Property.
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(a) Set forth on Schedule 1.1(a)(iii) hereto is a listing of
all United States and foreign patents, registered or unregistered,
including applications and registrations therefor and any reissues,
divisionals, continuations or continuations-in-part thereof, and trade
secrets which have been incorporated in or are practiced by the Topomax
System. Except for the security interests of SRI and Herkimer, title to
the Topomax Intellectual Property is held exclusively by Seller free
and clear of all options, liens, security interests, agreements,
restrictions and other encumbrances. Seller has no registered
copyrights, and no tradenames, trademarks, servicemarks, registered or
unregistered, relating to the Topomax System.
(b) There are no challenges, proceedings or infringement suits
pending or, to the knowledge of Seller, threatened with respect to the
Topomax Intellectual Property.
(c) The Topomax Intellectual Property has been developed
exclusively by Seller and to Seller's (and employees with
responsibility for intellectual property matters) knowledge none of the
apparatus or methods associated with the Topomax Intellectual Property
conflicts with, infringes or violates the rights of any other party.
(d) As of the Closing Date, except for Seller's rights
pursuant to the Premier License (as defined herein), neither Seller nor
any person other than Buyer shall have any claim to, rights under, or
interest in the Topomax System or the Topomax Intellectual Property,
including, but not limited to, Topomax System software source code and
object code, provided that Buyer acknowledges that certain of Seller's
ownership rights to the Purchased Assets derive from the ▇▇▇▇▇▇
Agreements.
(e) As of the Closing Date, Buyer will be vested with all
right, title and interest in and to the Topomax Intellectual Property,
free and clear of any rights or claims of any third party.
(f) To the knowledge of Seller, the Topomax Patents and the
patents licensed to Buyer pursuant to the LaserSight License are all of
the patents incorporated in or practiced by the Topomax System and/or
Seller's EyeSys products.
2.8 Patent Protection. Schedule 1.1(a)(iii) represents a complete
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and accurate list of all jurisdictions and registration numbers related to such
jurisdictions where the Topomax Patents have been applied for, registered, or
where any continuation or reissue applications corresponding to the Topomax
Patents have been filed, and there are no other jurisdictions where the Topomax
Patents have been registered or an application for registration has been made.
Except as indicated on Schedule 1.1(a)(iii), Seller has taken all reasonable and
customary action to maintain and protect the Topomax Patents and has paid all
fees to maintain Seller's rights in the Topomax Patents.
2.9 Third-Party Rights. Seller has not previously used or disclosed
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the Topomax Intellectual Property or any part thereof anywhere in the world. To
Seller's knowledge, none of the Topomax Patents are being infringed anywhere in
the world. Seller has not granted any license, right or option in or to any of
the Purchased Assets.
With respect to each of the Topomax Patents, Seller warrants that,
except as set forth on Schedule 2.9: (a) none of the Topomax Patents are, nor
has any of them ever been, subject to any injunction, judgment, order, decree,
ruling or charge; (b) to the knowledge of Seller (and employees with
responsibility for intellectual property matters) no action, suit, proceeding,
hearing, investigation, charge, complaint, claim or demand (collectively, a
"Claim") is or ever has been pending or is threatened which challenges the
legality, validity, enforceability, or ownership of any of the Topomax Patents;
and (c) to the knowledge of Seller (and employees with responsibility for
intellectual property matters), there is not any basis for any such Claim, and
Seller has received no notice asserting that any proposed development,
manufacturing, use, sale, license or disposition of products covered by the
Topomax Patents infringes or would infringe the rights of any other party.
2.10 Accuracy of Information. All documents delivered or to be
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delivered by Seller, and to Seller's knowledge, all documents to be delivered on
behalf of Seller, in connection with this Agreement and the transactions
contemplated hereby are true, complete and correct in all material respects.
Neither this Agreement, nor any of the other documents contains any untrue
statement of a material fact or omits a material fact necessary to make the
statements made by Seller herein or therein, in light of the circumstances in
which made, not misleading.
2.11 Agreements, Judgments and Decrees. Seller represents and warrants
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that it is not subject to any agreement, judgment or decree which could
materially and adversely affect its ability to satisfy its obligations
hereunder.
2.12 Transfer of Purchased Assets. The Purchase Price constitutes the
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highest and best price Seller could receive for the Purchased Assets and was
arrived at through arm's length negotiations between Buyer and Seller. Seller
has not entered into this agreement or made any transfer or incurred any
obligations hereunder or in connection herewith, with actual intent to disturb,
hinder, delay or defraud either present or future creditors or other persons.
The Topomax System is currently in the development stage. Seller has marketed
the Purchased Assets to various potential purchasers and the bid of Buyer is the
highest and best offer received by Seller for such assets and constitutes
reasonably equivalent value and fair consideration for such assets. The
Purchased Assets constitute only a portion of Seller's business and is far less
than substantially all of Seller's assets. The transactions contemplated by this
Agreement do not constitute a bulk transfer as defined in the Uniform Commercial
Code.
2.13 ▇▇▇▇▇▇ Agreements. As of the Closing (i) that certain Consulting
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Agreement (the "▇▇▇▇▇▇ Consulting Agreement"), dated February 1, 1999, between
Seller and ▇▇▇▇▇▇ and Associates, Inc. ("SAA"), and that certain Technology
Transfer and Software License Agreement (the "▇▇▇▇▇▇ Technology Agreement" and
together with the ▇▇▇▇▇▇ Consulting Agreement, the "▇▇▇▇▇▇ Agreements"), dated
February 1, 1999, among Seller, SAA and ▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Ph.D. ("▇▇▇▇▇▇") shall
be terminated, (ii) SAA shall be paid $275,000, and (iii) SAA and ▇▇▇▇▇▇
(collectively, the "▇▇▇▇▇▇ Parties") shall have transferred to Seller all right,
title and interest that the ▇▇▇▇▇▇ Parties have or any time in the past may have
had in the Purchased Assets.
2.14 Labor Matters. There is no labor or other collective bargaining
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unit representing or seeking to represent any employee of Seller. As of the
Closing Date, there shall be no employment agreement between Liu and Seller and
there shall be no restrictions on Liu performing services in the Topomax Field
on behalf of Buyer.
2.15 Product Liability. Seller has no liability (and, to the knowledge
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of Seller, there is no basis for any present or future action, suit, proceeding,
hearing, investigation, charge, complaint, claim or demand against it giving
rise to any liability) arising out of any injury to individuals or property as a
result of the ownership, possession or use of any product manufactured, sold,
leased or delivered by Seller.
2.16 Environmental Matters. Seller is in compliance with all
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Environmental Laws (as defined herein) in connection with the ownership, use,
maintenance and operation of the property relating to Seller's business and
otherwise in connection with the operation of Seller's business, (ii) Seller has
no liability, whether contingent or otherwise, under any Environmental Law with
respect to the operations or properties of Seller's business (including any of
the Purchased Assets), (iii) no notices of any violation or alleged violation
of, non-compliance or alleged non-compliance with, or any liability under, any
Environmental Law relating to the operations or properties of Seller's business
(including any of the Purchased Assets) have been received by Seller during the
past five years, (iv) there are no administrative, civil or criminal actions,
suits, claims, proceedings or investigations pending or, to the best knowledge
of Seller, threatened, relating to compliance with or liability under any
Environmental Law affecting Seller's business (including any of the Purchased
Assets), and (v) to Seller's knowledge, no underground tank or other underground
storage receptacle for Hazardous Materials (as defined herein) is located on any
property, leased or occupied by Seller or any of its Affiliates.
For purposes of this Section 2.16 "Hazardous Materials" means each and
every element, compound, chemical mixture, contaminant, pollutant, material,
waste or other substance which is defined, determined or identified as hazardous
or toxic under any Environmental Law or the release of which is prohibited under
any Environmental Law. Without limiting the generality of the foregoing, the
term will include:
(a) "hazardous substances" as defined in the Comprehensive
Environmental Response, Compensation and Liability Act of 1980, the
Superfund Amendment and Reauthorization Act of 1986, or Title III of
the Superfund Amendment and Reauthorization Act, each as amended, and
regulations promulgated thereunder;
(b) "hazardous waste" as defined in the Resource Conservation
and Recovery Act of 1976, as amended, and regulations promulgated
thereunder;
(c) "hazardous materials" as defined in the Hazardous
Materials Transportation Act, as amended, and regulations promulgated
thereunder;
(d) "chemical substance or mixture" as defined in the Toxic
Substances Control Act, as amended, and regulations promulgated
thereunder; and
(e) petroleum products and byproducts, and asbestos.
For purposes of this Section 2.16 "Environmental Law" means any
federal, state or local statute, regulation or ordinance or any judicial or
administrative decree or decision with respect to any Hazardous Materials,
drinking water, groundwater, wetlands, landfills, open dumps, storage tanks,
underground storage tanks, solid waste, waste water, storm water run-off, waste
emissions or ▇▇▇▇▇. Without limiting the generality of the foregoing, the term
will encompass each of the following statutes and the regulations promulgated
thereunder: (i) the Comprehensive Environmental Response, Compensation and
Liability Act of 1980 (codified in scattered sections of 26 U.S.C., 33 U.S.C.,
42 U.S.C. and 42 ▇.▇.▇.▇▇. 9601 et seq.); (ii) the Resource Conservation and
Recovery Act of 1976 (42 ▇.▇.▇.▇▇. 6901 et seq.); (iii) the Hazardous Materials
Transportation Act (49 ▇.▇.▇.▇▇. 1801 et seq.); (iv) the Toxic Substances
Control Act (15 ▇.▇.▇.▇▇. 2061 et seq.); (v) the Clean Water Act (33 ▇.▇.▇.▇▇.
7401 et seq.); (vi) the Clean Air Act (42 ▇.▇.▇.▇▇. 7401 et seq.); (vii) the
Safe Drinking Water Act (21 ▇.▇.▇.▇▇. 349); 42 ▇.▇.▇.▇▇. 201 andss. 300f et
seq.); (viii) the National Environmental Policy Act of 1969 (42 ▇.▇.▇.▇▇. 4321);
(ix) the Superfund Amendment and Reauthorization Act of 1986 (codified in
scattered sections of 10 U.S.C., 29 U.S.C., 33 U.S.C. and 42 U.S.C.); and (x)
Title III of the Superfund Amendment and Reauthorization Act (40 ▇.▇.▇.▇▇. 1101
et seq).
2.17 Taxes. All federal, state, local or foreign, sales, withholding,
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payroll and employment taxes, fees, assessment or charges, including any
interest, penalty or addition thereto ("Taxes") owed by Seller (whether or not
shown on any tax return), have been paid and all current Taxes have been paid or
provided for or will be paid or provided for prior to the Closing.
SECTION 3
REPRESENTATIONS AND WARRANTIES OF BUYER
Buyer hereby represents and warrants to Seller and covenants and
agrees, as of the Closing Date, as follows:
3.1 Corporate Organization. Buyer is a corporation duly organized,
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validly existing and in good standing under the laws of the jurisdiction of its
incorporation, with all requisite power and authority (corporate and other) to
own its properties and assets and to conduct its business as now conducted.
3.2 Corporate Authority. As of the Closing Date, Buyer will have
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the corporate power to enter into this Agreement and to carry out its
obligations hereunder. As of the Closing Date, the execution and delivery of
this Agreement and all agreements contemplated hereunder and the performance of
Buyer's obligations hereunder and thereunder, will have been duly authorized by
the Board of Directors of Buyer, and no other corporate proceedings on the part
of Buyer will be necessary to authorize such execution, delivery and
performance. This Agreement and all agreements contemplated hereunder have been
duly executed by Buyer and, as of the Closing Date, will constitute valid and
legally binding obligations of Buyer, enforceable against Buyer in accordance
with the terms hereof and thereof, except to the extent that such enforcement
may be subject to bankruptcy, insolvency, reorganization, moratorium or other
similar laws now or hereafter in effect relating to creditors' rights generally,
and the remedy of specific performance and injunctive and other forms of
equitable relief may be subject to equitable defenses and to the discretion of
the court before which any proceeding therefore may be brought.
3.3 No Violation. Neither the execution, delivery nor the
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performance by Buyer of this Agreement and all agreements contemplated hereunder
violates or will violate any provision of law, of any order, judgment or decree
of any court or other governmental or regulatory authority, or of the charter
documents or by-laws of Buyer, nor violates or will result in a breach of or
constitute (with due notice or lapse of time or both) a default under any
contract, lease, loan agreement, mortgage, security agreement, trust indenture
or other agreement or instrument to which Buyer is a party or by which it is
bound or to which any of its properties or assets is subject, nor will result in
the creation or imposition of any lien, charge or encumbrance of any kind
whatsoever upon any of the properties or assets of Buyer.
3.4 Consents and Approvals. Other than requirements of federal and
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state securities laws, no filing or registration with, no notice to and no
permit, authorization, consent or approval of any third party or any public or
governmental body or authority is necessary for the consummation by Buyer of the
transactions contemplated by this Agreement.
SECTION 4
ADDITIONAL AGREEMENTS AND COVENANTS
4.1 ▇▇▇▇▇ ▇▇▇. Effective as of the Closing Date, Seller shall
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(i) terminate Liu's employment with Seller without cause and satisfy all of
Seller's obligations in connection with such a termination, and (ii) release Liu
from any and all obligations under that certain Non Disclosure & Confidentiality
Agreement, dated December 23, 1996, between Liu and EyeSys-Premier, Inc. as
successor to EyeSys Technologies, Inc., which relate to the Topomax Field. After
the Closing Date, Buyer agrees to make Liu available to provide technical
assistance to Seller for up to 10 hours per month until the first to occur of
(i) the six-month anniversary of the Closing Date, and (ii) Liu has completed
the upgrade for Seller's Vista product.
4.2 LaserSight License. Seller agrees to grant Buyer a royalty-
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free, perpetual, exclusive license (the "LaserSight License") in the form
attached hereto as Exhibit A.
4.3 Premier License. Buyer agrees to grant Seller a royalty-free,
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perpetual, exclusive license (the "Premier License") in the form attached
hereto as Exhibit B.
4.4 Intellectual Property Further Assurances. After the Closing,
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Seller agrees to cooperate with any reasonable inquiry Buyer may have in
connection with the Topomax Intellectual Property. Seller shall make
available such personnel and books and records as Buyer may reasonably
request in connection with any such inquiry.
Seller agrees to sign and deliver to Buyer, promptly following Buyer's
request, any and all agreements, documents, certificates and papers that may be
necessary to confirm Buyer's exclusive ownership of the Topomax Intellectual
Property. If Buyer seeks to secure a reissue, divisional, continuation, or
continuation-in-part of any of the Topomax Patents or in the case of any
reexamination of the Topomax Patents Seller agrees to cooperate with Buyer in
any manner reasonably requested by Buyer. Seller agrees not to directly or
indirectly contest any proceeding, or otherwise aid, assist or participate in
any proceeding contesting, the validity or enforceability of the Topomax
Patents.
If Buyer is unable for any reason to secure a signature of an
authorized officer or agent of Seller for any agreements, documents,
certificates or papers necessary to carry out the terms set forth in the
immediately preceding paragraph, Seller does hereby irrevocably designate and
appoint Buyer and its authorized officers and agents as Seller's agent and
attorney-in-fact, to act for and in Seller's behalf and stead to execute such
items, with the same legal effect as if executed by Seller. Seller hereby
confirms that it has waived and quit claimed to Buyer any and all claims of any
nature whatsoever that Seller may now have or may later have in connection with
the Topomax Patents.
4.5 Filing of Documents. Seller does hereby irrevocably appoint
-------------------
Buyer and its authorized officers and agents as Seller's attorney-in-fact, to
act for and in Seller's behalf and stead for purposes of executing and
delivering any patent assignment documents relating to the Topomax Patents, any
collateral or lien release documents relating to the Purchased Assets, any
required consents to the LaserSight License, or acknowledgments as to no liens
on the Topomax Patents, all as Buyer may request with the same legal effect as
if executed by Seller.
SECTION 5
CONDITIONS TO SELLER'S OBLIGATION TO SELL
5.1 Conditions to Seller's Obligation to Sell. The obligation of
-----------------------------------------
Seller hereunder to sell the Purchased Assets to Buyer at the Closing is subject
to the satisfaction, as of the Closing Date, of each of the following
conditions thereto, provided that these conditions are for Seller's sole benefit
and may be waived by Seller at any time in its sole discretion:
(a) Buyer shall have executed this Agreement and delivered the
same to Seller.
(b) Buyer shall have wired same-day funds to the account
designated by Seller equal to that portion of the Purchase Price
described in Section 1.3(a).
(c) Buyer and Seller shall have executed the Premier License.
(d) The representations and warranties of Buyer shall be true
and correct as of the date when made and as of the Closing as though
made at that time (except for representations and warranties that speak
as of a specific date), and Buyer shall have performed, satisfied and
complied in all material respects with the covenants, agreements and
conditions required by this Agreement to be performed, satisfied or
complied with by Buyer at or prior to the Closing. Buyer shall have
received a certificate, executed by the Chief Executive Officer or
Secretary of Buyer, dated as of the Closing Date to the foregoing
effect.
(e) No statute, rule, regulation, executive order, decree,
ruling or injunction shall have been enacted, entered, promulgated or
endorsed by any court or governmental authority of competent
jurisdiction or any self-regulatory organization having authority over
the matters contemplated hereby which restricts or prohibits the
consummation of any of the transactions contemplated by this Agreement.
SECTION 6
CONDITIONS TO BUYER'S OBLIGATION TO PURCHASE
6.1 The obligation of Buyer hereunder to purchase the Purchased
Assetson the Closing Date is subject to the satisfaction of each of the
following conditions, provided that these conditions are for Buyer's sole
benefit and may be waived by Buyer at any time in Buyer's sole discretion:
(a) Seller shall have executed this Agreement and delivered the
same to Buyer.
(b) The representations and warranties of Seller shall be true
and correct as of the date when made and as of the Closing as though
made at that time and Seller shall have performed, satisfied and
complied in all material respects with the covenants, agreements and
conditions required by this Agreement to be performed, satisfied or
complied with by Seller at or prior to the Closing. Buyer shall have
received a certificate, executed by the Chief Executive Officer or
Chief Financial Officer of Seller, dated as of the Closing Date to the
foregoing effect.
(c) Buyer shall be satisfied with its business, legal,
accounting, financial and intellectual property due diligence it was
able to perform prior to the Closing Date.
(d) No statute, rule, regulation, executive order, decree,
ruling or injunction shall have been enacted, entered, promulgated or
endorsed by any court or governmental authority of competent
jurisdiction or any self-regulatory organization having authority over
the matters contemplated hereby which restricts or prohibits the
consummation of any of the transactions contemplated by this Agreement.
(e) Buyer shall have received an opinion of Seller's legal
counsel, dated as of the Closing Date, in a form reasonably acceptable
to Buyer.
(f) Seller shall have delivered to Buyer certificates of good
standing of Seller and the subsidiaries which are organized pursuant to
the corporate laws of a State within the United States as of a date no
earlier than 30 days prior to the Closing.
(g) Seller shall have delivered to Buyer a certificate
executed by a duly authorized officer certifying (i) a copy of Seller's
certificate of incorporation and by-laws, (ii) resolutions authorizing
the execution of this Agreement, and (iii) incumbency matters.
(h) The ▇▇▇▇▇▇ Consulting Agreement and ▇▇▇▇▇▇ Technology
Agreement shall have each been terminated on terms and conditions
acceptable to Buyer, and Buyer, SAA and ▇▇▇▇▇▇ shall have entered into
new agreements the form and substance of which is acceptable to Buyer.
(i) Seller shall have taken all action contemplated by
Section 4.1 hereof.
(j) Seller shall have delivered to Buyer a general release, in
form and substance reasonably acceptable to Buyer, all necessary UCC-3
partial releases or terminations, and all necessary documents to
release claims to the Topomax Patents from each of the following
lienholders of Seller: (i) SRI, and (ii) Herkimer.
(k) Seller shall have delivered to Buyer an assignment, in
form and substance reasonably acceptable to Buyer, of each of the
Topomax Patents.
(l) Seller shall have delivered to Buyer a copy of the
LaserSight License Agreement.
(m) Buyer shall be satisfied as to the ownership and any
possible impairment of the Purchased Assets, including without
limitation, the Topomax Intellectual Property.
SECTION 7
INDEMNIFICATION
7.1 Seller's Indemnification. Seller hereby agrees to
------------------------
indemnify and hold harmless Buyer, and any person or entity controlling,
controlled by or under common control with Buyer, from and against any and all
claims, damages, liabilities, losses and expenses (including reasonable
attorneys' fees) resulting from or arising out of (i) any breach by Seller of
any covenant, representation, warranty or obligation of Seller contained in this
Agreement or any agreement executed in connection with this Agreement other than
the LaserSight License or the Premier License, (ii) any infringement or alleged
infringement claim brought against Buyer with respect to the Topomax
Intellectual Property (in the form the Topomax Intellectual Property existed as
of the Closing Date), whether arising prior to the Closing Date or thereafter,
or (iii) any liability or obligation of Seller, including, without limitation,
judgments or liens attached to or asserted against the Purchased Assets or
Buyer.
7.2 Buyer's Indemnification. Buyer hereby agrees to indemnify
-----------------------
and hold harmless Seller, and any person or entity controlling, controlled by or
under common control with Seller, from and against any and all claims, damages,
liabilities, losses and expenses (including reasonable attorneys' fees)
resulting from or arising out of any breach by Buyer of any covenant,
representation, warranty or obligation of Buyer contained in this Agreement or
any agreement executed in connection with this Agreement other than the
LaserSight License or the Premier License.
7.3 Notice of Claim. The party to be indemnified hereunder
---------------
(the "Indemnified Party") shall notify in writing (such notification shall be
referred to herein as a "Claims Notice") the indemnifying party (the
"Indemnifying Party") within (i) 60 days after a claim is presented to the
Indemnified Party or the Indemnified Party becomes aware of substantial facts
that would reasonably appear to the Indemnified Party to be likely to give rise
to a claim for indemnity hereunder, or (ii) five days if the Indemnified Party
receives formal notice of the filing of a suit, petition or claim or the
scheduling of a hearing related to a matter which may give rise to claim for
indemnity hereunder. Each Claims Notice shall, if feasible, contain a reasonable
estimate by the Indemnified Party of the losses, costs, liabilities and expenses
(including, but not limited to, costs and expenses of litigation and attorneys'
fees) which the Indemnified Party may incur. If Buyer is the Indemnified Party
and delivers a Claims Notice to Seller, and either or both of the payments
described in Section 1.3(b) or (c) have not yet been made, Buyer shall have the
right to escrow the amount claimed in the Claims Notice. These funds shall be
released from escrow and either paid to Seller or retained by Buyer depending on
the final resolution of such situation. Such escrow shall be established with a
bank or title company acceptable to Buyer and Seller, with neither party
unreasonably withholding their consent.
The Indemnifying Party shall have the right to defend a claim
and control the defense, settlement and prosecution of any litigation; provided,
however, in order to have the right to defend a claim and control the defense,
settlement and prosecution of any litigation, the Indemnifying Party (i) must
expressly acknowledge the assumption by it of all liabilities related to such
litigation, including without limitation, the cost of such defense, settlement
and prosecution of such litigation, and (ii) unless the Indemnified Party
consents otherwise in writing, may only compromise or settle such litigation
solely for money damages for which the Indemnifying Party shall be fully liable.
If the Indemnifying Party fails to defend such claim, the Indemnified Party will
(upon further notice to the Indemnifying Party) have the right to undertake the
defense, compromise or settlement of such claim on behalf and for the account
and risk of the Indemnifying Party. The Indemnifying Party will make available
to the Indemnified Party or its representatives, at the Indemnifying Party's
expense, all records and other materials in the Indemnifying Party's possession
and all employees or agents of the Indemnifying Party required by the
Indemnified Party for the Indemnified Party's use in contesting any such claim,
and the Indemnified Party and its representatives agree that they will not use
the Indemnifying Party's making available to them of any such material, or its
agreement to do so, as a basis for asserting a waiver by the Indemnifying Party
of any statutory or common law privilege the Indemnifying Party might have in
any other proceedings, whether related or unrelated to the matter giving rise to
the claim. If the Indemnified Party fails to notify the Indemnifying Party of a
claim in accordance with the terms of this Section 7.3, and the Indemnifying
Party is thereby materially prejudiced by such failure of notice in its defense
of the claim, the Indemnifying Party's obligation to indemnify hereunder shall
be extinguished with respect to such claim to the extent that the Indemnifying
Party has been prejudiced by the failure to give such notice. The amount of
losses for which indemnification is provided under this Agreement shall be net
of any amounts recovered by the Indemnified Party under insurance policies
or from unaffiliated third parties with respect to such losses.
SECTION 8
GENERAL PROVISIONS
8.1 Governing Law; Jurisdiction. This Agreement shall be governed
----------------------------
by and construed in accordance with the laws of the State of Delaware applicable
to contracts made and to be performed in the State of Delaware, without giving
effect to the principles of conflicts of law. The parties hereto irrevocably
consent to the jurisdiction of the United States federal courts and state courts
located in the County of New Castle in the State of Delaware in any suit or
proceeding based on or arising under this Agreement or the transactions
contemplated hereby and irrevocably agree that all claims in respect of such
suit or proceeding may be determined in such courts. Buyer and each Seller
irrevocably waives the defense of an inconvenient forum to the maintenance of
such suit or proceeding. Service of process upon Buyer or Seller mailed by
certified mail, return receipt requested, shall be deemed in every respect
effective service of process upon Buyer in any suit or proceeding arising
hereunder. Nothing herein shall affect Seller's right to serve process in any
other manner permitted by law. A final non-appealable judgment in any such suit
or proceeding shall be conclusive and may be enforced in other jurisdictions by
suit on such judgment or in any other lawful manner.
8.2 Counterparts. This Agreement may be executed in two or more
------------
counterparts, including, without limitation, by facsimile transmission, all of
which counterparts shall be considered one and the same agreement and shall
become effective when counterparts have been signed by each party and delivered
to the other party. In the event any signature page is delivered by facsimile
transmission, the party using such means of delivery shall cause additional
originally executed signature pages to be delivered to the other parties.
8.3 Headings. The headings of this Agreement are for convenience of
--------
reference and shall not form part of, or affect the interpretation of, this
Agreement.
8.4 Severability. If any provision of this Agreement shall be invalid
------------
or unenforceable in any jurisdiction, such invalidity or unenforceability shall
not affect the validity or enforceability of the remainder of this Agreement or
the validity or enforceability of this Agreement in any other jurisdiction.
8.5 Entire Agreement; Amendments. This Agreement, the Schedules
------------------------------
and Exhibits hereto, which are incorporated herein by this reference, and the
instruments referenced herein contain the entire understanding of the parties
with respect to the matters covered herein and therein and, except as
specifically set forth herein or therein, neither Buyer nor Seller makes any
representation, warranty, covenant or undertaking with respect to such matters.
No provision of this Agreement may be waived other than by an instrument in
writing signed by the party to be charged with enforcement and no provision of
this Agreement may be amended other than by an instrument in writing signed by
Buyer and each Seller.
8.6 Notice. Any notice herein required or permitted to be given
------
shall be in writing and may be personally served or delivered by nationally-
recognized overnight courier or by facsimile-machine confirmed telecopy, and
shall be deemed delivered at the time and date of receipt (which shall include
telephone line facsimile transmission). Each party shall provide notice to the
other party of any change in address. The addresses for such communications
shall be:
If to Buyer:
LaserSight Incorporated
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: Chief Executive Officer
with a copy to:
The Lowenbaum Partnership, L.L.C.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇. ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
If to Seller:
Premier Laser Systems, Inc.
▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇▇▇▇▇
with a copy to:
Knobbe, Martens, ▇▇▇▇▇ & Bear, LLP
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, Esq.
and
O'Melveny & ▇▇▇▇▇, L.L.P.
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, Esq.
8.7 Successors and Assigns. This Agreement shall be binding upon and
----------------------
inure to the benefit of the parties and their successors and assigns. Neither
Buyer nor Seller shall assign this Agreement or any rights or obligations
hereunder without the prior written consent of the other.
8.8 Third Party Beneficiaries. This Agreement is intended for the
-------------------------
benefit of the parties hereto and their respective permitted successors and
assigns and is not for the benefit of, nor may any provision hereof be enforced
by, any other person.
8.9 Survival. All representations and warranties in this
--------
Agreement shall survive the execution and delivery of this Agreement and the
Closing. All agreements contained herein shall survive the Closing until, by
their respective terms, they are no longer operative.
8.10 Public Filings; Publicity. No party hereto shall make any public
--------------
statement regarding the transactions contemplated hereby unless the language and
timing of such statement has been approved by both Buyer and Seller. If Buyer
and Seller cannot mutually agree on such disclosure matters, either party may
make such disclosures as may be advised by such party's securities counsel.
Notwithstanding the foregoing, each of the parties hereto may, in documents
required to be filed by it with the SEC or other regulatory bodies, make such
statements with respect to the transactions contemplated hereby as each may be
advised is legally necessary upon advice of its counsel; provided, however, that
the party making such determination shall immediately notify the other party
that it intends to make a public announcement and the parties hereto shall, in
good faith, attempt to agree on any public announcements or publicity statements
with respect thereto (which approval shall not be unreasonably withheld or
delayed).
8.11 Further Assurances. Each party shall do and perform, or cause to
-------------------
be done and performed, all such further acts and things, and shall execute and
deliver all such other agreements, certificates, instruments and documents, as
the other party may reasonably request in order to carry out the intent and
accomplish the purposes of this Agreement and the consummation of the
transactions contemplated hereby.
8.12 Topomax Patent Enforcement. Upon learning of the infringement of
--------------------------
any of the Topomax Patents by third parties, Seller shall inform the other in
writing of that fact, and shall supply the other with any evidence available
pertaining to the infringement.
8.13 Termination of Agreement. If the Closing shall not have occurred
------------------------
on or before the first to occur of (i) April 1, 2000, or (ii) Seller files for
protection under any bankruptcy or insolvency statute or rule (or any of
Seller's creditors take such action), this Agreement shall terminate at the
close of business on such date.
JURY TRIAL WAIVER. EACH OF THE PARTIES HERETO IRREVOCABLY WAIVES ANY
RIGHT TO TRIAL BY JURY FOR ANY MATTER ARISING UNDER OR IN ANY WAY RELATED TO
THIS AGREEMENT AND THE OTHER TRANSACTION DOCUMENTS. THIS IS A KNOWING WAIVER
GRANTED AFTER CONSULTATION WITH SUCH PARTY'S LEGAL COUNSEL.
IN WITNESS WHEREOF, Seller and Buyer have caused this Agreement to be
duly executed as of the date first above written.
LASERSIGHT TECHNOLOGIES, INC. PREMIER LASER SYSTEMS, INC.
By: /s/▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: /s/▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
----------------------------- -----------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
----------------------------- -----------------------------
Title: Secretary Title: President & CEO
----------------------------- -----------------------------
EYESYS-PREMIER, INC.
By: /s/▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
-----------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
-----------------------------
Title: President
-----------------------------
Signature Page to Technology Purchase Agreement
Schedule 1.1(a)(iii)
Topomax Intellectual Property
1. Each of the following patents (collectively, the "Topomax Patents") are
being purchased by Buyer:
Appl No./ Filing Date/
Title Country Patent No. Issue Date
----- ------- ---------- ----------
A Method of Corneal Analysis Using 08/736,348 10/23/96
a Checkered ▇▇▇▇▇▇▇ Apparatus USA 5,841,511 11/24/98
A Method of Corneal Analysis Using USA 09/102,839 06/23/98
a Checkered ▇▇▇▇▇▇▇ Apparatus
A Method of Corneal Analysis Using
a Checkered ▇▇▇▇▇▇▇ Apparatus PCT PCTUS97/19487 10/22/97
Checkered ▇▇▇▇▇▇▇ Apparatus and BRAZIL PI9306484-5 06/02/93
Method
Checkered ▇▇▇▇▇▇▇ Apparatus and CAN 2137151 06/02/93
Method
Checkered ▇▇▇▇▇▇▇ Apparatus and JAPAN 500870/1994 06/02/93
Method
Multi-Camera Corneal Analysis System USA 08/638,875 04/25/96
5,847,804 12/08/98
Multi-Camera Corneal Analysis System USA 08/956,515 10/23/97
5,953,100 09/14/99
Multi-Camera Corneal Analysis System EPO 95940570.5 10/30/95
Multi-Camera Corneal Analysis System JAPAN 514798/1996 10/30/95
Topomax System patent application USA 03/07/00
2. Each of the following items are being purchased by Buyer:
a. All drawings, designs, plans, proposals and technical data of the
EyeSys 2000 System that are utilized in the Topomax System
b. Copy of the EyeSys 2000 System components vendor list
