Exhibit 10.1
PATENT ASSIGNMENT AND LICENSE AGREEMENT
THIS PATENT ASSIGNMENT AND LICENSE AGREEMENT ("Agreement") is entered into
and effective this ________ day of ________________, 2002, by and between PLS
Liquidating LLC, a Delaware limited liability company, having a place of
business at 0 Xxxxxxxx, Xxxxx 000, Xxxxx Xxxxx, Xxxxxxxxxx 00000 ("PLS") and
SurgiLight, Inc., a Delaware corporation, having a place of business at
____________________________________________ ("SurgiLight").
RECITALS
A. Premier Laser Systems, Inc. ("Premier") and SurgiLight have entered into
a Patent Assignment and License Agreement dated September ___, 2000 ("Existing
Agreement"), in which Premier assigned certain patents (the "Previously Assigned
Patents") to SurgiLight and also granted to SurgiLight an exclusive license
under certain patents (the "Previously Licensed Patents") to make, have made,
use, offer for sale, sell and import ophthalmic products or ophthalmic services
solely for ophthalmic applications of Erbium lasers.
B. Premier and SurgiLight have entered into a Purchase and Sale Agreement
(defined below) to which the Existing Agreement is an exhibit, and a Pledge and
Security Agreement (defined below), regarding the Previously Assigned Patents
(defined below) and the Previously Licensed Patents (defined below).
C. Effective as of October 9, 2001, Premier has assigned its patents,
patent applications, and the Existing Agreement, to PLS.
D. PLS and SurgiLight desire to enter into an agreement, which will
supersede the Existing Agreement, in which PLS will grant to SurgiLight a
limited, worldwide, exclusive license under the Previously Licensed Patents to
make, have made, use, offer for sale, sell, and import products or services
solely in SurgiLight's Field of Use (as defined below).
E. PLS and SurgiLight have entered into a new agreement pursuant to that
certain Letter Agreement attached hereto as Exhibit D (the "Letter Agreement"),
in which (i) SurgiLight desires to obtain an assignment of the New Assigned
Patent (defined below), subject to an exclusive, worldwide, transferable,
royalty-free license back to PLS for use outside SurgiLight's Field of Use
(defined below), and (ii) SurgiLight desires PLS to grant to SurgiLight a
limited, worldwide, exclusive license under the New Licensed Patents (defined
below) to make, have made, use, offer for sale, sell, and import products or
services solely in SurgiLight's Field of Use.
NOW, THEREFORE, in consideration of the premises, mutual promises and
covenants contained herein, the parties agree as follows:
1. DEFINITIONS
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For purposes of this Agreement, the following terms shall have the meanings
set forth below:
1.1 "Previously Licensed Patents" shall mean certain of the patents and
patent applications listed in Exhibit A of this Agreement and which correspond
to the patents and patent applications listed in Exhibit C to the Purchase and
Sale Agreement.
1.2 "Previously Assigned Patents" shall mean certain of the patents and
patent applications listed in Exhibit B of the Purchase and Sale Agreement.
1.3 "New Licensed Patents" shall mean certain of the patents and patent
applications listed in Exhibit A of this Agreement which are not Previously
Licensed Patents
1.4 "New Assigned Patent" shall mean that certain patent listed in Exhibit
B of this Agreement.
1.5 "Licensed Patents" shall mean the New Licensed Patents together with
the Previously Licensed Patents.
1.6 "Assigned Patents" shall mean the New Assigned Patent together with the
Previously Assigned Patents.
1.7 "Purchase and Sale Agreement" shall mean that certain agreement between
SurgiLight and Premier dated September ___, 2000, attached hereto as Exhibit E,
entitled "Purchase and Sale Agreement."
1.8 "Purchase Note" shall mean the Purchase Note referenced in the Purchase
and Sale Agreement.
1.9 "Pledge and Security Agreement" shall mean that certain agreement
between SurgiLight and Premier dated ___________, 2000, attached hereto as
Exhibit F, referenced in the Purchase and Sale Agreement and entitled "Pledge
and Security Agreement."
1.10 "SurgiLight's Field of Use" shall mean solely ophthalmic applications
of lasers.
1.11 "New Owner" shall mean an entity that receives title to one or more of
the Licensed Patents by virtue of an assignment from PLS.
2. PREVIOUS AGREEMENTS
2.1 This Agreement supersedes and cancels the Existing Agreement.
2.2 The Pledge and Security Agreement is hereby amended to include the
Licensed Patents and the Assigned Patents as part of the definition of "Patents"
under such agreement.
2.3 The Purchase and Sale Agreement, Pledge and Security Agreement, and
Purchase Note shall each remain in full force and effect.
3. GRANT OF RIGHTS
3.1 Subject to the license set forth in Section 3.2 of this Agreement, PLS
hereby assigns its entire right, title and interest in the Assigned Patents to
SurgiLight. PLS agrees to execute a Patent Assignment substantially in the form
of the document attached as Exhibit C.
3.2 SurgiLight hereby grants to PLS an exclusive, worldwide, transferable,
royalty-free license under the New Assigned Patent to make, have made, use,
import, offer for sale and sell any and all products and to practice any and all
methods, in all fields of use outside SurgiLight's Field of Use.
3.3 PLS hereby grants to SurgiLight a limited, worldwide, exclusive license
under the Licensed Patents to make, have made, use, offer for sale, sell and
import products and methods solely in SurgiLight's Field of Use.
3.4 SurgiLight shall have the right to sublicense any of the rights
provided to it by the terms of this Agreement.
3.5 PLS shall have the right to sublicense any of the rights provided to it
by the terms of this Agreement.
4. OWNERSHIP
4.1 SurgiLight acknowledges that PLS is the sole owner of the Licensed
Patents, and SurgiLight agrees that it does not obtain any interest in the
Licensed Patents except for the rights granted herein. SurgiLight agrees not to
take any action challenging or opposing, on any grounds whatsoever, the
ownership by PLS of the Licensed Patents, or PLS's intellectual property rights
therein. Furthermore, SurgiLight agrees not to contest the validity or
enforceability, or assist to request any third party to contest the validity or
enforceability of any of the Licensed Patents, to the extent and in
jurisdictions where permitted by law, in any judicial, governmental, or
quasi-governmental suit or proceeding; and not to request reexamination, or
assist or request any third party to request reexamination of any of the
Licensed Patents, to the extent and in jurisdictions where permitted by law.
5. TERM AND TERMINATION
5.1 Term. Unless sooner canceled or terminated as provided herein, the
licenses granted herein shall terminate on the expiration date of the last
expiring of the Assigned Patents and Licensed Patents.
5.2 Termination.
5.2.1 This Agreement shall automatically and immediately terminate
upon SurgiLight's breach of any provision of the Purchase and Sale Agreement,
the Purchase Note, the Pledge and Security Agreement or the Letter Agreement.
5.2.2 If any breach or default in respect of any of the terms of this
Agreement by either of the parties hereto shall occur, the other of said parties
shall have the right to provide written notice specifying in detail the nature
of the breach or default and if said alleged breach or default has, in fact,
occurred and is not cured within sixty (60) days from the date of mailing of the
written notice, the other of said parties shall have the right to terminate this
Agreement upon giving an additional fifteen (15) days notice to the defaulting
party of its intent to terminate, and this Agreement shall terminate at the end
of such notice.
5.2.3 For purposes of this Agreement, an event of default shall occur
if (i) SurgiLight or PLS fails to perform any of their respective obligations
hereunder; or (ii) SurgiLight becomes insolvent, or in financial difficulty, of
the business of SurgiLight is placed in the hands of a receiver or trustee, or
an assignment is made for the benefit of creditors of SurgiLight, if permitted
by law.
5.2.4 Upon any termination of this Agreement, the assignment granted
under Section 3.1 and the license granted under Section 3.3 shall be revoked and
SurgiLight shall make no further use of any of the Assigned Patents or Licensed
Patents.
5.2.5 Certain provisions of this Agreement necessary to carry out the
intent of the parties, including, without limitation, Sections 4, 8, 9, 10, 11,
12, and 13 shall survive the expiration of this Agreement.
6. PATENT MARKING
6.1 SurgiLight shall xxxx each product that is made, used, sold or imported
pursuant to the provisions herein with a patent notice in compliance with the
applicable statutory requirements.
7. PROSECUTION AND MAINTENANCE
7.1 SurgiLight, in its sole discretion and at its own expense, shall
control the entire patent process relating to the Assigned Patents, including
without limitation, the maintenance, reexamination, reissue, and extension of
patents; provided, however, that if SurgiLight decides not to maintain the
Assigned Patents, it shall notify PLS in writing sixty (60) days prior to the
expiration of the Assigned Patents, and if requested by PLS, SurgiLight shall
assign such patent to PLS (or to PLS's designee), and take any action to prevent
the expiration thereof at PLS's expense.
7.2 PLS, in its sole discretion and at its own expense, shall have the
right to control the entire patent process relating to the Licensed Patents,
including without limitation, prosecution of patent applications and
maintenance, reexamination, reissue, and extension of patents.
8. ENFORCEMENT
8.1 SurgiLight shall have the right, but not the obligation, to take any
action or file a lawsuit, at its own expense, to enforce the New Assigned Patent
and the Licensed Patents in SurgiLight's Field of Use.
8.2 PLS shall have the right, but not the obligation, to take any action or
to file a lawsuit, at its own expense, to enforce or defend the New Assigned
Patent and the Licensed Patents outside SurgiLight's Field of Use.
8.3 Each party agrees to cooperate with and assist the other party, at the
other party's expense, in enforcing, protecting, and defending the Assigned
Patents and Licensed Patents, to the extent reasonably necessary, including but
not limited to, being joined as a necessary or desirable party to any legal
proceedings.
9. NO WARRANTIES
9.1 Nothing in this Agreement shall be construed as a warranty or
representation that anything made, used, sold or otherwise disposed of under any
license granted in this Agreement is or will be free from infringement of
patents of third parties.
10. INDEMNIFICATION
10.1 SurgiLight hereby agrees to indemnify, defend, and hold PLS harmless
from and against any and all claims, liability, loss, costs, damage or expense
(including attorneys' fees and costs) arising from or in any matter connected
with: (i) the infringement or alleged infringement of any third party rights
resulting from the manufacture or sale of SurgiLight's products or services; or
(ii) the operation of SurgiLight's business as it relates to this Agreement.
11. ASSIGNMENT
11.1 The Licensed Patents, this Agreement, any portion hereof, or any right
granted hereunder, may be freely assigned or transferred in whole or in part by
PLS. The Assigned Patents, this Agreement, any portion hereof, or any right
granted hereunder, may not be assigned or transferred by SurgiLight.
11.2 If PLS assigns any or all of the Licensed Patents to one or more New
Owners, PLS may, at PLS's option, require the New Owner of each Licensed Patent
to assume any and all obligations owed by PLS to SurgiLight in connection with
such Licensed Patents, in which event PLS shall thereafter be discharged from
and relieved of such obligations to SurgiLight.
11.3 If PLS assigns any or all of the Licensed Patents to one or more New
Owners, any or all rights granted to PLS by SurgiLight in connection with such
Licensed Patents, may, at PLS's option, be assigned to New Owner(s).
11.4 Any and all rights and obligations of New Owner(s) with respect to
each of the Licensed Patents may be further assigned with the ownership of each
Licensed Patent, and New Owner(s) shall thereafter be discharged from and
relieved of such obligations.
11.5 PLS agrees to notify SurgiLight of its sale, assignment or transfer of
ownership of any Licensed Patent(s) to New Owner(s), and if New Owner(s) agree
to assume any of PLS's obligations to SurgiLight, PLS shall provide to
SurgiLight a redacted copy of such sale, assignment or transfer agreement.
12. NOTICES
12.1 Any notice, request, demand, or other communication required or
permitted to be given under this Agreement shall be in writing and addressed to
its addressee at the address set forth above, or such address as a party may
specify from time to time.
12.2 Such notice, request, demand, or other communication shall be deemed
to have been duly given (1) at the time of delivery when hand delivered to the
other party; or (2) at the time of confirmed transmission when sent by telex or
facsimile at the address and number set forth below, provided that a
confirmation copy is sent by airmail or registered or certified mail within
twenty-four (24) hours after the fax transmission (any notice given by telex or
facsimile shall be deemed received on the next business day if such notice is
received after 5:00 p.m. (recipient's time) or on a non-business day); or (3) at
the time of delivery, or of attempted delivery in the event that delivery cannot
be completed due to no fault of the sender, when sent by registered or certified
mail or by overnight courier service.
13. GENERAL PROVISIONS
13.1 The parties hereby agree that no agency, joint venture or partnership
is created thereby, and that neither party shall incur obligations in the name
of the other party without said other party's prior written consent.
13.2 This Agreement shall be governed and construed in accordance with the
laws of the State of California, and the parties agree that it is executed and
delivered in that State. In the event that any legal action becomes necessary to
enforce or interpret the terms of this Agreement, the parties agree that such
action shall be brought in the United States District Court for the Central
District of California, or in the State Court for the County of Orange,
California, and the parties hereby submit to the jurisdiction of said Courts. In
the event that any legal action becomes necessary to enforce or interpret the
terms of this Agreement, the prevailing party shall be entitled, in addition to
its court costs or arbitration fees, to such reasonable attorneys' fees, expert
witness fees, and other litigation expenses as shall be fixed by a court of
competent jurisdiction.
13.3 If any provision of this Agreement should be held to be void or
unenforceable, in whole or in part, the court or tribunal so holding shall
reform the provision to make it enforceable while maintaining the spirit and
goal of the provision, and if the court or tribunal finds it cannot so reform
that provision, such provision or part thereof shall be treated as severable,
leaving valid the remainder of this Agreement.
13.4 This Agreement, together with the Purchase and Sale Agreement, the
Purchase Note, the Pledge and Security Agreement and the Letter Agreement,
constitutes the entire understanding and agreement of the parties as to the
subject matter herein, and there are no representations, warranties, promises,
or undertakings other than those contained herein. No course of conduct or
dealing between the parties shall act as a modification or waiver of any
provision of this Agreement, and no waiver or modification of any of the terms
or provisions of this Agreement shall be valid, unless contained in a single
written document signed by both parties.
13.5 No failure or delay on the part of either party hereto in insisting
upon or enforcing or resorting to any of its powers, rights, remedies, or
options hereunder, and no partial or single exercise thereof, shall constitute a
waiver of any such powers, rights, remedies or options, unless such waiver be in
writing, signed by the party to be charged.
13.6 This Agreement shall be binding upon the parties hereto and their
respective subsidiaries, affiliates, heirs, legal representatives, successors
and permitted assigns.
13.7 The terms of this Agreement have been negotiated by the parties hereto
and the language used in this Agreement shall be deemed to be the language
chosen by the parties hereto to express their mutual intent. This Agreement
shall be construed without regard to any presumption or rule requiring
construction against the party causing such instrument or any portion thereof to
be drafted, or in favor of the party receiving a particular benefit under the
agreement. No rule of construction will be applied against any party.
13.8 The headings in this Agreement are intended for convenience only, and
shall not be used to interpret the meaning of this Agreement or to determine the
rights of the parties.
13.9 Each party shall perform any further acts and sign and deliver any
further documents that are reasonably necessary to give full effect to the
provisions of this Agreement.
[Signatures begin on next page]
IN WITNESS WHEREOF, the parties have caused this instrument to be executed,
effective as of the day and year first above written.
PREMIER LASER SYSTEMS, INC.
("Premier")
Dated: By: /s/
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Name:
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Title:
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PLS LIQUIDATING LLC
("PLS")
Dated: By: /s/
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Name:
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Title:
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SURGILIGHT, INC.
("SurgiLight")
Dated: By: /s/
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Name:
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Title:
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EXHIBIT C
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PATENT ASSIGNMENT
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WHEREAS, PLS Liquidating LLC, a Delaware limited liability company having
offices at 0 Xxxxxxxx, Xxxxx 000, Xxxxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter
"ASSIGNOR"), is the owner of the entire right, title, and interest to the
following United States issued patent (hereinafter "the Patent"):
Patent No. Issue Date Title
---------- ---------- -----
5,722,970 March 3, 1998 LASER SURGICAL METHOD USING
TRANSPARENT PROBE
WHEREAS, SurgiLight, a Delaware corporation having offices at
_______________________________ (hereinafter "ASSIGNEE") desires to purchase the
entire right, title, and interest in and to the Patent;
NOW, THEREFORE, in consideration of One Dollar ($1.00) to ASSIGNOR, and
other good and valuable consideration, the receipt of which is hereby
acknowledged, ASSIGNOR hereby further acknowledges that it has sold, assigned,
and transferred, and by these presents does hereby sell, assign, and transfer,
unto ASSIGNEE, its successors, legal representatives, and assigns, the entire
right, title, and interest throughout the world in, to, and under the said
Patent and all reissues, reexaminations, renewals, and extensions thereof, and
all rights of priority under International Conventions.
ASSIGNOR does hereby sell, assign, transfer, and convey to ASSIGNEE, its
successors, legal representatives, and assigns all claims for damages and all
remedies arising out of any violation of the rights assigned hereby that may
have accrued prior to the date of assignment to ASSIGNEE, or may accrue
hereafter, including, but not limited to, the right to xxx for, collect, and
retain damages for past infringements of the said Patent.
IN TESTIMONY WHEREOF, I hereunto set my hand and seal this _____ day of
______________, 20__.
PLS LIQUIDATING LLC
By: /s/
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Name Printed:
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Title:
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STATE OF CALIFORNIA
ss.
COUNTY OF
On ________________, before the undersigned, personally appeared
______________________________ personally known to me (or proved to me on the
basis of satisfactory evidence) to be the person whose name is subscribed to the
within instrument, and acknowledged to me that he/she executed the same in
his/her authorized capacity(ies), and that by his/her signature on the
instrument the person, or the entity upon behalf of which the person acted,
executed the instrument.
WITNESS my hand and official seal.
[SEAL]
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Notary Signature
