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EXHIBIT 10.15
INTELLECTUAL PROPERTY TRANSFER AGREEMENT
This INTELLECTUAL PROPERTY TRANSFER AGREEMENT (the "Agreement") is
made as of the 7th (seventh) day of January 1998, (the "Execution Date") by and
between LASERTECHNICS, INC. (hereinafter "LASX"), a corporation organized under
the laws of Delaware, having its principal place of business at 0000 Xxxxxxxxx
Xxxxx, Xxxxxxxxxx, Xxxxx 00000, and XL Vision, Inc. (hereinafter "XLV"), a
corporation organized under the laws of Delaware, having its principal place of
business at 00000 000xx Xxxxxxx, Xxxxxxxxx, Xxxxxxx 00000.
WHEREAS, LASX and XLV, for and in consideration of the mutual
promises, covenants and agreements set forth herein, and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, enter into this Agreement.
1. GENERAL DEFINITIONS
Terms in this Agreement (other than the headings) that are capitalized
have the meanings established for such terms in the succeeding Paragraphs of
this Section 1.
a. EXECUTION DATE. The term Execution Date is the date
first above written.
b. EFFECTIVE DATE. The term Effective Date is the date
of LASX shareholder approval in accordance with Section 9(p)
of this Agreement.
c. INTELLECTUAL PROPERTY. The term Intellectual
Property shall mean and include the following interests and
rights: (a) all patents and patent rights including, without
limitation, all utility models, applications, continuations,
divisions, provisionals, continuations-in-part, reissues, and
any reexamined patents; (b) all patentable subject matter
including, without limitation, any and all inventions,
information, proprietary processes and formulae, designs,
schematics, parts list, manufacturing diagrams, devices,
source code, object code, algorithms, architecture, structure,
display screens, layouts, processes, development tools, and
the like that may contain subject matter that is eligible to
be protected through patent protection, whether or not fixed
in a tangible medium and whether or not reduced to practice;
(c) all Trademarks; (d) all copyrights and copyright
applications including, without limitation, all original works
of authorship fixed in a tangible medium, whether registered
or unregistered; (e) all trade secrets; (f) all know-how; (g)
all confidential information including, without limitation,
all data, information, compilations, disclosures,
documentation, source code commentary and media constituting,
describing or relating to the above, and the like; and (h) all
other world-wide
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intellectual property rights, whether currently vested,
perfected, registered, or available only through the common
law.
d. TRADEMARKS. The term Trademarks means all rights in
registered, unregistered, intent-to-use, and/or common law
trademarks, service marks, trade names, icons, logos, slogans,
trade dress, and any other indicia of source or sponsorship of
goods and services, including all associated and appurtenant
goodwill throughout the world.
e. SPOT/MAG AGREEMENT. XLV and Spot/Mag, Inc., a
corporation organized under the laws of Taiwan having its
principal place of business at [___________________________],
are currently negotiating a license agreement to be entered
into between XLV and Spot/Mag under which Spot/Mag will
receive certain Intellectual Property rights for digital
still camera and dithering technology in exchange for an
obligation to pay royalties and other remuneration to XLV.
The term Spot/Mag Agreement shall refer to the above license
agreement.
f. PRODUCTS. The term Products shall mean and include
the systems specified in Exhibit C developed and
commercialized based on the XLV Technology as defined herein.
g. SHARES. The term Shares shall mean shares of the
Common Stock, One Cent ($.01) par value, of LASX, as in effect
immediately following the one-for-twenty reverse stock split
contemplated by Sections 9(p) and 9(q) of this Agreement.
2. ASSIGNMENT OF XLV TECHNOLOGY AND XLV LICENSE OPTION
a. ASSIGNMENT OPTION
i. On April 1, 1999, or upon such date LASX
accelerates technology enhancement funding in
accordance with Section 5(b)(viii) of this Agreement
and LASX pays to XLV all sums required under Section
5 of this Agreement, whichever date occurs first, and
extending for a period of ninety (90) days
thereafter, provided LASX has exercised the Exclusive
License Option (as hereinafter defined), LASX shall
have the right to receive an assignment of the XLV
Technology (as hereinafter defined) from XLV, such
right to be exercised at LASX's option (the
"Assignment Option"). LASX may exercise the
Assignment Option by providing XLV with written
notice of LASX's desire to exercise the Assignment
Option within the time frame specified above.
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b. EXERCISE OF ASSIGNMENT OPTION
Upon LASX exercising LASX's Assignment Option in accordance with the
Section 2(a)(i) of this Agreement, XLV agrees to the following:
i. XLV hereby agrees to assign, grant, convey,
and transfer all world-wide rights, title, and
interest in all of its Intellectual Property relating
or associated in any way to the document reader and
digital camera technology specified in Exhibit A and
the dithering technology described in Exhibit B
(hereinafter "the XLV Technology"), including all
associated goodwill and world-wide rights to xxx,
recover damages, and seek injunctive relief for past
infringement or misappropriation, to LASX, its
successors, assigns and legal representatives.
ii. XLV hereby agrees to execute all documents
necessary to perfect and record LASX's interest in
the XLV Technology.
iii. XLV hereby agrees to cooperate fully with
LASX in the acquisition, prosecution and enforcement
of all Intellectual Property rights in the XLV
Technology and all improvements to the XLV
Technology. Specifically, by way of example and not
limitation, XLV agrees to fully review and execute
declarations, oaths or any patent applications
associated with the XLV Technology, to execute any
assignment documents to be recorded in the patent
office of the United States or other countries, to
aid in the arguments during examination and
prosecution of any patent applications covering the
XLV Technology, and to cooperate as a consultant
and/or witness in any proceedings to enforce patent
or other Intellectual Property rights associated with
the XLV Technology.
iv. XLV hereby agrees to assign to LASX all
improvements to the XLV Technology developed in whole
or in part by XLV within ninety (90) days of the
assignment of the XLV Technology. XLV agrees not to
disclose or market any such improvements to any party
other than LASX for ninety (90) days following the
assignment of the XLV Technology.
v. XLV hereby agrees that it shall receive no
further compensation beyond what is specified in this
Agreement for the obligations to cooperate and to
assign further rights detailed in this Section.
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c. WARRANTIES, REPRESENTATIONS, AND COVENANTS REGARDING
THE ASSIGNMENT OF XLV TECHNOLOGY
(1) Upon LASX exercising LASX's Assignment Option in
accordance with Section 2(a)(i) of this Agreement,
XLV makes the following ongoing warranties,
representations, and covenants to LASX regarding the
assignment of the XLV Technology:
i. XLV represents, warrants and agrees that:
(a) it has all requisite legal power and authority to
execute and deliver the assignments and to perform
its obligations detailed herein; (b) the assignments
specified in this Section 2 shall be duly executed
and delivered by a duly authorized officer of XLV;
(c) the execution and delivery of the assignments
specified in this Section 2 and the performance of
its obligations hereunder shall be duly authorized by
all necessary corporate action of XLV; and (d) that
there shall be no outstanding agreements,
assignments, or encumbrances inconsistent with any
provisions of the assignments specified in this
Section 2.
ii. XLV agrees that the assignments, obligations
and other terms specified in this Section 2 shall
constitute legal, valid and binding obligations and
shall be enforceable against XLV in accordance with
their terms.
iii. XLV represents and warrants that it owns full
right, title, and interest in and to the XLV
Technology to be transferred herein, subject only to
the Spot/Mag Agreement, free and clear of all liens,
claims, charges, or encumbrances, and no person or
entity other than XLV has any interest in the XLV
Technology, including, without limitation, any
license, security interest, royalty interest,
contingent interest or otherwise. XLV further
represents and warrants to LASX that it has full
power to convey all rights in the XLV Technology.
iv. XLV represents that the XLV Technology
represents and includes valuable trade secrets owned
by XLV and XLV knows of no instance of disclosure or
other circumstance that would prevent LASX from
asserting and enforcing the ownership rights in the
XLV Technology transferred under this Section 2.
v. XLV represents that it knows of no reason why
the XLV Technology may not be patented in the United
States or other countries.
vi. XLV represents and warrants that neither
XLV's present and former employees and consultants,
nor any other present or former employer or
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contractor of any kind of XLV's present and former
employees and consultants, has any rights in or claim
to any portion of the XLV Technology.
vii. XLV represents that no other party has any
rights in or claims to any portion of the XLV
Technology.
viii. XLV represents that it knows of no United
States or foreign Intellectual Property rights which
would be infringed by the use of the XLV Technology
by LASX in the United States or elsewhere.
ix. XLV represents and warrants that it has no
obligation to compensate any person or entity for the
development, use, sale, or exploitation of the XLV
Technology to be transferred herein, and XLV has not
granted to any other person or entity any license,
option or other rights to develop, use, sell, or
exploit in any manner the XLV Technology transferred
herein, other than the Spot/Mag Agreement, whether or
not requiring the payment of royalties or other
consideration.
x. XLV agrees that LASX shall have the sole
discretion and right in determining whether to
institute, maintain, or settle any suit for
infringement(s) or misappropriation of any of the
Intellectual Property rights associated with the XLV
Technology to be transferred herein with all costs,
attorneys fees, and expenses to be paid by LASX.
LASX further shall have the sole right to collect and
keep any and all damages recovered from such
infringement or misappropriation, whether past,
present, or future.
xi. XLV agrees to notify LASX in writing of any
claims, assertions, allegations, suggestions, and the
like that XLV or LASX infringes any right of a third
party through the use of the XLV Technology to be
transferred to LASX under this Section 2.
(2) Upon LASX exercising LASX's Assignment Option in
accordance with Section 2(a)(i) of this Agreement,
LASX makes the following ongoing warranties,
representations, and covenants to XLV regarding the
assignment of the XLV Technology:
i. LASX warrants and represents that LASX shall
have all requisite legal power and authority to
execute and receive the assignments specified in this
Section 2 and to perform its obligations hereunder.
ii. LASX agrees that LASX will present to XLV
information related to dithered 2D imaging product
offerings to other parties acquiring the same
dithered 2D imaging products from LASX that XLV has
purchased. LASX
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agrees to provide sufficient information to allow XLV
to evaluate the terms and conditions of such later
offerings. XLV shall have the option to acquire
dithered 2D imaging products under such later terms
and conditions if XLV determines that such later
terms and conditions are more advantageous than the
terms and conditions offered directly to XLV by LASX.
LASX is not obligated to provide the identity of the
other parties or any details of the relationship with
such parties not relevant to the offerings to XLV.
XLV's option shall be limited to the acceptance or
rejection of all terms and conditions associated with
another party and XLV shall not have the option to
accept only some of the terms and conditions and not
others.
d. ASSIGNMENT FEE
i. Upon LASX exercising LASX's Assignment
Option, and in consideration of the above assignment,
LASX agrees to pay XLV a technology assignment fee
payable in full by delivery of Three Hundred Thousand
(300,000) Shares. The Shares paid to XLV under this
Section 2(d)(i), shall be delivered to XLV upon the
completion of the assignment of the XLV Technology.
3. LICENSE OF INTELLECTUAL PROPERTY RIGHTS
a. LICENSE GRANT
Upon LASX exercising LASX's Assignment Option in accordance with
Section 2, LASX agrees to the following:
i. LASX hereby agrees to grant to XLV, and XLV
agrees to accept from LASX an exclusive, fully
transferable, worldwide, irrevocable, royalty-free,
fully paid-up and perpetual license to make, have
made, use, import, sell, and offer to sell, the
Intellectual Property rights to the XLV Technology
within the field of use specified in Exhibit E
attached hereto. XLV shall have and maintain the
right to modify and make derivative works of the XLV
Technology for improvements solely applicable within
the field of use specified in Exhibit E and the right
to grant sublicenses to its rights limited to within
such field of use. Subject to Section 2(b)(iv), the
derivative works of XLV for such improvements shall
be the sole and exclusive property of XLV.
ii. For all improvements to the XLV Technology
applicable in any manner outside the field of use
specified in Exhibit E, XLV agrees to assign
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to LASX all improvements to the XLV Technology in
accordance with Section 2(b)(i) of this Agreement.
4. ASSIGNMENT OF SPOT/MAG AGREEMENT
a. ASSIGNMENT
Upon LASX exercising LASX's Assignment Option in accordance with
Section 2, and provided the Spot/Mag Agreement is executed within
three (3) years of the Effective Date, XLV agrees to the following:
i. XLV does hereby agree to sell, assign,
transfer and set over to LASX, and LASX hereby agrees
to accept from XLV, all right and interest in the
Spot/Mag Agreement or in respect thereof, including
without limitation chooses in action. LASX agrees to
assume the rights and obligations arising after the
assignment of the Spot/Mag Agreement, including
without limitation the right to receive all royalties
and other amounts payable under the Spot/Mag
Agreement, the same to be held and enjoyed by LASX
for its own use and enjoyment and for the use and
enjoyment of its successors, and assigns, to the end
of the term or terms of the Spot/Mag Agreement is or
may be granted, as fully and entirely as the same
would have been held and enjoyed by XLV if the
assignment made under this paragraph had not been
made.
b. WARRANTIES, REPRESENTATIONS AND COVENANTS REGARDING
THE SPOT/MAG AGREEMENT
i. XLV does hereby warrant and represent that:
(1) The Spot/Mag Agreement shall not grant,
convey or transfer to Spot/Mag any exclusive
Intellectual Property rights;
(2) The Spot/Mag Agreement shall not assign,
grant, convey or transfer to Spot/Mag any
ownership interest in any Intellectual
Property rights but shall only license such
Intellectual Property rights to Spot/Mag;
(3) The Spot/Mag Agreement shall not grant to
Spot/Mag the right to assign the Spot/Mag
Agreement or to sublicense the rights
contained therein; and
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(4) The only consideration for the Spot/Mag
Agreement between XLV and Spot/Mag shall be a
running royalty payable to XLV in United
States currency.
ii. XLV hereby agrees to present the Spot/Mag
Agreement to LASX for LASX's approval prior to XLV
entering into the Spot/Mag Agreement with Spot/Mag.
XLV agrees and understands that LASX's approval of
the Spot/Mag Agreement shall be required prior to XLV
entering into the Spot/Mag Agreement. LASX's
approval shall not be unreasonably withheld.
iii. XLV represents and warrants that it shall
have the right and authority to fully assign the
Spot/Mag Agreement to LASX and that it shall take all
corporate action necessary to effect such transfer.
XLV agrees to notify Spot/Mag of such transfer and to
take all necessary steps so that royalty payments due
under the Spot/Mag Agreement shall be delivered
directly to LASX and that, in addition to all other
rights under the Spot/Mag Agreement, any right to
reports or right to audit records of such royalties
shall inure to the benefit of LASX.
iv. XLV represents and warrants that it shall not
grant, convey or transfer any Intellectual Property
rights in the XLV Technology to any other party other
than LASX in accordance with the terms of this
Agreement or to Spot/Mag pursuant to the Spot/Mag
Agreement.
v. LASX agrees and understands that XLV has no
obligation to enter into the Spot/Mag Agreement.
c. ASSIGNMENT FEE
i. In consideration of the assignment of the
Spot/Mag Agreement, LASX agrees to pay XLV a license
assignment fee payable in full by delivery of Two
Hundred Thousand (200,000) Shares under the following
conditions:
(1) LASX shall deliver to XLV, on the 15th day
following the expiration of each quarter, One
(1) Share for each Ten Dollars ($10.00) of
royalty received from Spot/Mag under the
Spot/Mag Agreement until such time as LASX
has delivered Two Hundred Thousand (200,000)
Shares.
(2) XLV agrees and understands that royalties
received by LASX under the Spot/Mag Agreement
after the delivery of Two Hundred Thousand
(200,000) Shares to XLV in accordance with
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4(b)(i)(1) of this Agreement shall be the
sole and exclusive property of LASX.
5. OPTION PURCHASE AND TECHNOLOGY ENHANCEMENT
a. TECHNOLOGY ENHANCEMENT SERVICES
i. XLV agrees to continue to provide personnel
services and project management for the enhancement
and commercialization of the Products specified in
Exhibit C in accordance with the product development
schedule as detailed below and shown in Exhibit D
attached hereto. Any personnel supplied by XLV shall
be deemed to be independent contractors and shall not
be deemed to be employees of LASX for any purpose.
ii. XLV and LASX agree that within sixty (60)
days of the Effective Date, staffing for the
enhancement of the Products of employees and/or
independent contractors shall be complete (the
"Staffing Date").
iii. XLV agrees to maintain true and accurate
records that substantiate expenses relating to the
enhancement of the Products ("Expense Reports")
including the date incurred and the nature thereof.
Expense Reports shall be delivered to LASX at the
times specified under Section 5(a)(iv) of this
Agreement and at any other time upon the request of
LASX.
iv. XLV and LASX agree that upon the first (1st)
day of each calendar month after the Execution Date,
LASX management and XLV project management personnel
shall meet to discuss the development of the
Products. XLV shall supply to LASX at such meetings
the latest Expense Report and any and all relevant
information relating to the enhancement of the
Products, including, but not limited to, all current
Product specifications and documentation, Product
development schedules and marketing studies. Any
modifications requested by LASX to the Product
development schedule or Product specifications
described above must be approved in writing by XLV so
as not to materially alter the terms of this
Agreement. Such approval shall not be unreasonably
withheld.
v. XLV and LASX agree that LASX shall have the
right to cease payments under Section 5(b) any time
after the Staffing Date, without further liability,
in accordance with reasonable business judgment
decisions or for failure of the development to meet
critical milestone dates as detailed in Exhibit D.
Upon the cessation of payments under this Section
5(a)(v) or failure of LASX to make payments under
Section 5(b) when due, any License
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Option, Exclusive License Option or Assignment Option
right not previously exercised by LASX as of the date
of payment cessation shall be terminated, and each of
LASX's and XLV's obligations and rights under this
Agreement, except for liability for pre-termination
breaches of this Agreement, shall be terminated
following the notice and cure time periods provided
for under Section 9(r) of this Agreement including,
but not limited to, the obligation of XLV to provide
personnel services and project management for the
enhancement and commercialization of the Products
pursuant to this Section.
vi. LASX shall notify XLV in writing of its
decision to cease payments pursuant to Section
5(a)(v) of this Agreement.
b. OPTION PURCHASE RIGHTS AND TECHNOLOGY ENHANCEMENT FUNDING
In consideration for the option rights to purchase technology
and the technology enhancements set forth in this Agreement,
and provided that LASX has not terminated this Agreement for
any reason prior to the due date of any particular payment
pursuant to Section 5(a)(v) of this Agreement, LASX, either
directly or through a corporate intermediary, shall pay to XLV
the sums specified below:
i. Upon the Execution Date, LASX shall pay to
XLV the sum of Five Hundred Thousand Dollars
($500,000.00).
ii. Within thirty (30) days of the Effective
Date, LASX shall pay to XLV the sum of One Million
Dollars ($1,000,000.00).
iii. On March 15, 1998, LASX shall pay to XLV the
sum of Five Hundred Thousand Dollars ($500,000.00).
iv. On July 1, 1998, LASX shall pay to XLV the
sum of Five Hundred Thousand Dollars ($500,000.00).
v. On September 1, 1998, LASX shall pay to XLV
the sum of One Million Dollars ($1,000,000.00).
vi. On October 1, 1998, LASX shall pay to XLV
the sum of Five Hundred Thousand Dollars
($500,000.00).
vii. On December 1, 1998, LASX shall pay to XLV
the sum of Six Hundred Thousand Dollars
($600,000.00).
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viii. LASX may, at LASX's option, accelerate the
technology funding schedule detailed in this Section
5(b) and pay the sums indicated prior to the dates
specified herein.
ix. All sums paid to XLV by LASX under this
Section 5(b) shall be nonrefundable.
c. TECHNOLOGY ENHANCEMENT AND TRANSFER OPTION EXERCISE
i. Upon such date that LASX has paid to XLV the
sum specified in Section 5(b)(ii), and extending for
a period of six (6) months thereafter, LASX shall
have the right to receive, at LASX's option, and XLV
shall grant to LASX upon LASX exercising such option,
a nonexclusive, fully transferable, worldwide,
irrevocable, royalty-free perpetual license to make,
have made, use, import, sell, and offer to sell, the
Intellectual Property rights to the XLV Technology
(the "License Option").
ii. LASX may exercise the License Option by
notifying XLV in writing of its desire to obtain the
above license within the time frame specified in
Section 5(c)(i).
iii. Upon the exercising of the License Option by
LASX, and in consideration of the above license, LASX
shall vest in XLV Two Hundred Thousand (200,000)
Shares.
iv. Upon such date LASX has paid to XLV all sums
required under Section 5 of this Agreement, and
extending for a period of ninety (90) days
thereafter, provided LASX has exercised the License
Option, LASX shall have the right to receive, at
LASX's option, and XLV shall grant to LASX upon LASX
exercising such option, an exclusive, fully
transferable, worldwide, irrevocable, royalty-free,
perpetual license to make, have made, use, import,
sell, and offer to sell, in all fields of use except
the field of use specified in Exhibit E, the
Intellectual Property rights to the XLV Technology
(the "Exclusive License Option") subject to those
rights, and only those rights, granted to Spot/Mag
pursuant to the Spot/Mag Agreement.
v. LASX may exercise the Exclusive License
Option by notifying XLV in writing of its desire to
obtain the above exclusive license within the time
frame specified in Section 5(c)(vi).
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vi. Upon the exercising of the Exclusive License
Option by LASX, and in consideration of the above
exclusive license, LASX shall vest in XLV Three
Hundred Thousand (300,000) Shares.
vii. Any shares vested in XLV under this Section
5(c) of this Agreement shall be delivered to XLV
within forty-five (45) days of vesting.
d. OWNERSHIP OF TECHNOLOGY
i. All technology and any Intellectual Property
rights associated therewith conceived or developed by
XLV or LASX in performance of the work or obligations
contemplated under this Agreement relating in whole
or in part to the enhancement and commercialization
of the Products ("Product Technology"), including but
not limited to the Products, or the process of
manufacture thereof, shall be owned solely and
exclusively by XLV subject to the License Option, the
Exclusive License Option, and the Assignment Option.
ii. XLV shall execute and deliver any documents
reasonably requested by LASX to transfer such Product
Technology to LASX under the License Option, the
Exclusive License Option, or the Assignment Option in
accordance with their respective terms as described
herein.
iii. Provided LASX exercises the Assignment
Option, LASX shall control the filing of
applications for patents, trademarks, copyrights and
other Intellectual Property rights for such Product
Technology whether or not it shall be deemed to have
been jointly or solely developed and whether or not
one party is believed to have contributed more to the
development than the other.
iv. Provided LASX exercises the Assignment
Option, XLV agrees to cooperate fully in the
acquisition, prosecution and enforcement of all
Intellectual Property rights relating in whole or in
part to the Product Technology. Specifically, by
way of example and not limitation, XLV agrees to
fully review and execute any patent applications
associated with the Product Technology, to execute
any declarations, oaths or assignment documents to be
recorded in the patent office of the United States or
other countries, to aid in the arguments during
examination and prosecution of any patent
applications covering the Product Technology, and to
cooperate as a consultant and/or witness in any
proceedings to enforce patent or other intellectual
property rights associated with the Product
Technology.
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e. WARRANTIES, REPRESENTATIONS AND COVENANTS REGARDING
PRODUCT ENHANCEMENT AND SERVICES
i. XLV warrants and represents that XLV
consulting and management personnel will use all
reasonable efforts to develop and market the
Products.
ii. XLV warrants and represents that, provided
LASX has exercised the Assignment Option, XLV shall
not disclose to any third party any proprietary,
confidential, technical and/or business information,
know-how, data, operating practices, developments or
inventions relating to the enhancement and
commercialization of the Products.
iii. Provided LASX has exercised the License
Option or the Exclusive License Option, XLV shall
indemnify and hold LASX harmless against any and all
claims by third parties that may be brought or
instituted against LASX prior to July 1, 2004, that
any use of the XLV Technology contemplated under this
Agreement infringes upon any Intellectual Property
rights of any third party. LASX shall give XLV
prompt notice of any claim and shall offer XLV the
opportunity to control the defense of such claim;
provided, however, LASX shall have the opportunity to
control the defense of such claim if: (i) XLV fails
to defend a claim that XLV is not obligated to
indemnify LASX against such claim; (ii) the claiming
third party seeks non-monetary damages against LASX;
or (iii) LASX obtains a legal opinion that LASX has
defenses different from or additional to defenses
available to XLV. XLV shall have the right to: (1)
obtain for LASX a perpetual, royalty-free license to
use, improve, and commercialize the XLV Technology;
or (2) refund to LASX all payments in cash or stock
made to XLV under this Agreement and to terminate
this Agreement. XLV shall not be obligated to
indemnify LASX against claims of infringement to the
extent such claim is based upon LASX modifications to
the XLV Technology or upon LASX using the XLV
Technology with any other hardware or software. All
obligations of XLV to indemnify LASX under this
Section 5(e)(iii) shall be limited to the total value
of money received by XLV from LASX under this
Agreement. XLV agrees to cooperate fully and use its
best efforts to assist LASX in the defense of any
such claim brought or instituted against LASX and
shall provide to LASX assistance and information as
may reasonably be required to fully defend against
such claim including, but not limited to, providing
access to fact and expert witnesses and producing
requested documents . XLV agrees that XLV shall not
take any action or any position adverse to the
interest of LASX in the defense of such claim.
iv. XLV agrees that upon the successful
completion of a demonstration unit of the Products,
provided LASX has exercised the License Option,
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LASX shall have the right, at LASX's expense and on
behalf of XLV, to seek the prosecution and
acquisition of all Intellectual Property rights
related to the enhancement of the Products. XLV
agrees to cooperate fully with LASX in the
prosecution and acquisition of such Intellectual
Property rights.
v. XLV and LASX understand and agree that the
parties' joint agreement to cooperate in the
enhancement of the Products is not an agreement of
partnership and none is intended hereby. In no event
is one party the agent for the other for any purpose
other than as specifically required by this
Agreement.
vi. Provided LASX has exercised the Exclusive
License Option, LASX agrees that LASX will present to
XLV information related to dithered 2D imaging
product offerings to other parties acquiring the same
dithered 2D imaging products from LASX that XLV has
purchased. LASX agrees to provide sufficient
information to allow XLV to evaluate the terms and
conditions of such later offerings. XLV shall have
the option to acquire dithered 2D imaging products
under such later terms and conditions if XLV
determines that such later terms and conditions are
more advantageous than the terms and conditions
offered directly to XLV by LASX. LASX is not
obligated to provide the identity of the other
parties or any details of the relationship with such
parties not relevant to the offerings to XLV. XLV's
option shall be limited to the acceptance or
rejection of all terms and conditions associated with
another party and XLV shall not have the option to
accept only some of the terms and conditions and not
others.
6. LOCK-UP AGREEMENT
a. XLV hereby irrevocably agrees that it will not sell,
offer to sell, solicit an offer to buy, contract to sell,
grant any option to purchase, or otherwise transfer or dispose
of any Shares issued pursuant to the License Option, Exclusive
License Option or the Assignment Option for a period of one
(1) year after the exercise of the applicable option without
the prior written consent of LASX; provided, however, that XLV
may pledge such Shares as long as the beneficiary of such
pledge agrees in writing to be bound by the terms of this
lock-up provision.
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7. REGISTRATION RIGHTS
a. DEMAND REGISTRATION. XLV shall have the right on any
two (2) occasions between the second and fourth anniversary of
the Effective Date to make a written request of LASX for
registration with the Securities and Exchange Commission
("SEC") (a "Demand Registration"), under and in accordance
with the provisions of the Securities Act, for the offer and
sale by XLV of the Shares issued pursuant to this Agreement
(the "Registrable Securities"). Upon receipt of the written
request by XLV of a Demand Registration, LASX shall prepare
and file with the SEC, within sixty (60) days following the
receipt of such request, a registration statement on Form S-3
(or another appropriate form) (the "Demand Registration
Statement") for the offer and sale by XLV of the Registrable
Securities and use reasonable efforts to have each such Demand
Registration Statement declared effective by the SEC as
promptly as reasonably practicable after the filing thereof
with the SEC. LASX shall use its reasonable efforts to keep
such Demand Registration Statement and the prospectus used in
connection therewith effective and in compliance with
applicable law for a period of at least twelve (12) months
(the "Effectiveness Period"). All expenses incident to LASX's
performance or compliance with this Section 7(a) shall be paid
by LASX; provided, however, XLV shall be responsible for and
shall pay any underwriting, brokerage or selling agent's fees,
discounts or commissions, and shall be responsible for and pay
all legal fees and expenses of counsel to XLV or counsel to
any underwriter or selling agent. In connection with any
underwritten offering to which LASX shall have consented, LASX
shall provide, or cause to be provided, such representations,
warranties, covenants, opinions, "cold comfort" letters,
indemnifications, opportunities for due diligence and other
matters, and shall take all such other reasonable actions, as
are customary in underwritten public offerings of securities.
Failure of LASX to cause the Demand Registration Statement to
be declared effective within one hundred fifty (150) days of
filing shall result in a sum payable to XLV by LASX (the
"Registration Penalty"). The Registration Penalty shall be
equal to the sum of Fifty Thousand Dollars ($50,000.00) for
failing to cause the Demand Registration Statement to be
declared effective within one hundred fifty (150) days after
filing and an additional Fifty Thousand Dollars ($50,000.00)
for each ninety (90) day period thereafter until such time as
the Demand Registration Statement is declared effective.
Failure of the Demand Registration Statement to be declared
effective for reasons that can be demonstrated by LASX to be
beyond the control of LASX shall not result in a Registration
Penalty.
b. PIGGYBACK REGISTRATION RIGHTS. If at any time
between the second and fourth anniversary of the Effective
Date, LASX proposes to file with the SEC a registration
statement (a "Piggyback Registration Statement") under the
Securities Act with respect to any offering of any Shares,
other than (i) a registration statement with respect to any
employee stock options or similar securities, securities
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issued or to be issued pursuant to any employee benefit plan,
or any interests in any employee benefit plan, (ii) a
registration statement in connection with the consummation of
an acquisition or business combination transaction, or (iii) a
registration statement filed in connection with an exchange
offer or an offering of securities to LASX's existing security
holders, LASX shall in each case give written notice (a
"Piggyback Registration Notice") of such proposed filing of
such Piggyback Registration Statement to XLV as soon as
practicable, but in no event less than 20 days before the
anticipated filing date, and shall, subject to the provisions
of this Section 7(b), use its commercially reasonable efforts
to include in such Piggyback Registration Statement the
Registrable Securities with respect to which LASX has received
from XLV a written request for inclusion therein within 15
days after the Piggyback Registration Notice is given to XLV.
Notwithstanding the foregoing, LASX will not be required to
include any Registrable Securities in any registration
statement if such registration statement is declared effective
on or following the fourth anniversary of the Effective Date.
In the case of an underwritten registration, if the managing
underwriters advise LASX in writing that in their opinion the
inclusion in such registration statement of all the
Registrable Securities proposed to be included (together with
any Shares proposed to be included in such registration
statement by other holders of Shares who also have exercised
piggyback registration rights with respect to such
registration) would interfere with the successful marketing of
the securities proposed to be registered, then XLV shall be
entitled to include such number of shares as, in the opinion
of the managing underwriter, would not so interfere and such
shares shall be allocated among XLV and any other holders of
Shares who have also had exercised piggyback registration
rights with respect to such registration pro rata in
proportion to their respective holdings of Shares (or as they
may otherwise agree). The delivery of a Piggyback
Registration Notice by LASX shall in no way obligate LASX to
file a Piggyback Registration Statement under this Section
7(b) and notwithstanding any such filing, LASX may, in its
sole discretion, determine not to offer the securities to
which the registration statement relates or to otherwise
withdraw such registration statement. XLV may not participate
in any registration hereunder unless XLV (i) in the case of an
underwritten registration, agrees to sell such Registrable
Securities on the basis provided in any underwriting
arrangements approved by LASX, (ii) provides all such
information as is reasonably required to effect such
registration and completes and executes all undertakings,
questionnaires, powers of attorney, indemnities, underwriting
agreements (in the case of an underwritten registration) and
other documents reasonably required under the terms of such
underwriting arrangements (in the case of an underwritten
registration) or applicable laws, and (iii) in the case of an
underwritten registration, complies with all other reasonable
requests of the managing underwriter (including but not
limited to requests for the delivery of customary legal
opinions by counsel to XLV) and complies with all other
reasonable requests related to such registration.
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i. If the registration statement filed by LASX
in which the Registrable Securities are permitted to
be included pursuant to this Section 7(b) provides
for the offering of Shares on a delayed or continuous
basis (a "Shelf Registration Statement" and, together
with a Demand Registration Statement and a Piggyback
Registration Statement, a "Registration Statement"),
then any Registrable Securities included in such
Shelf Registration Statement likewise, subject to the
provisions of this Agreement, will be permitted to be
offered on such delayed or continuous basis between
the second and fourth anniversary of the Effective
Date.
c. Notwithstanding anything to the contrary in Sections
7(a) and 7(b), LASX may, by delivering written notice to XLV,
prohibit offers and sales of Registrable Securities pursuant
to either the Demand Registration Statement or the Shelf
Registration Statement at any time if (A)(i) LASX is in the
possession of material non-public information relating to
LASX, (ii) LASX determines that such prohibition is necessary
in order to avoid a requirement to disclose such material
non-public information to the public and (iii) LASX determines
in good faith that public disclosure of such material
non-public information would not be in the best interests of
LASX and its stockholders or (B)(i) LASX has made a public
announcement relating to an acquisition or business
combination transaction including LASX and/or one or more of
its subsidiaries that are material to LASX and its
subsidiaries taken as a whole and (ii) LASX determines in good
faith that (x) offers and sales of Registrable Securities
pursuant to either the Demand Registration Statement or the
Shelf Registration Statement prior to the consummation of such
transaction (or such earlier date as LASX shall determine) is
not in the best interests of LASX and its stockholders or (y)
it would be impracticable at the time to obtain any financial
statements relating to such acquisition or business
combination transaction that would be required to be set forth
in such registration statement; provided, however, that upon
(i) the public disclosure by LASX of the material non-public
information described in clause (A) of this paragraph or (ii)
the consummation, abandonment or termination of, or the
availability of the required financial statements with respect
to, a transaction described in clause (B) of this paragraph,
the suspension of the use of such registration statement
pursuant to this Section 7(b) shall cease and LASX shall
promptly notify XLV that dispositions of Registrable
Securities may be resumed. Suspension of offers and sales of
Registerable Securities pursuant to this Section 7(c) shall
not occur more than once in any twelve (12) months period, and
such suspension shall not exceed ninety (90) days at any one
time unless agreed to by LASX and XLV in advance, such
agreement not to be unreasonably withheld when further
suspension would provide some benefit to shareholders.
d. LASX may require XLV to furnish to LASX such
information regarding the distribution of Registrable
Securities as is required by law to be disclosed in the
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Registration Statement, and LASX may delay the filing of the
Registration Statement (or in the case of a Piggyback
Registration Statement, exclude such Registrable Securities)
if XLV fails to furnish such information within a reasonable
time after receiving such request. XLV agrees to notify LASX
as promptly as practicable of any inaccuracy or change in
information previously furnished by XLV to LASX or of the
occurrence of any event as a result of which the prospectus
included in the Registration Statement contains or would
contain an untrue statement of a material fact regarding XLV
or XLV's intended method of distribution of Registrable
Securities, or omits to state any material fact regarding XLV
or XLV's intended method of distribution of Registrable
Securities, necessary to make the statements therein, in light
of the circumstances then existing, not misleading and
promptly furnish to LASX any additional information required
to correct and update any previously furnished information or
required so that such prospectus shall not contain, with
respect to XLV or the distribution of the Registrable
Securities, an untrue statement of a material fact or omit to
state a material fact necessary to make the statements
therein, in light of the circumstances then existing, not
misleading.
e. LASX will indemnify and hold harmless XLV from and
against any and all loss, damage, liability, cost and expense
to which XLV may become subject under the Securities Act or
otherwise, insofar as such losses, damages, liabilities, costs
or expenses arise out of or are based upon any untrue
statement or alleged untrue statement of any material fact
contained in such Registration Statement, any prospectus
contained therein or any amendment or supplement thereto, or
arise out of or are based upon the omission or alleged
omission to state therein a material fact required to be
stated therein or necessary to make the statements therein, in
light of the circumstances in which they were made, not
misleading; provided, however, that LASX will not be liable in
any such case to the extent that any such loss, damage,
liability, cost or expense arises out of or is based upon an
untrue statement or alleged untrue statement or omission or
alleged omission provided by XLV.
f. XLV will indemnify and hold harmless LASX, each of
its directors, each of its officers who have signed the
Registration Statement, and each person, if any, who controls
LASX from and against any and all loss, damage, liability,
cost and expense to which any such person may become subject
under the Securities Act or otherwise, insofar as such losses,
damages, liabilities, costs or expenses are arising out of or
are based upon any untrue statement or alleged untrue
statement of any material fact contained in such Registration
Statement, any prospectus contained therein or any amendment
or supplement thereto, or arise out of or are based upon the
omission or alleged omission to state therein a material fact
required to be stated therein or necessary to make the
statements therein, in light of the circumstances in which
they were made, not misleading; in each case to the extent,
but only to the extent, that such untrue statement or alleged
untrue statement or omission or alleged omission was provided
by XLV.
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8. BOARD REPRESENTATION
a. So long as XLV and permitted assigns own in the
aggregate at least Four Hundred Thousand (400,000) Shares
delivered pursuant to this Agreement, LASX warrants and
represents that LASX will use its reasonable best efforts to
cause one (1) person designated by XLV to be nominated to
serve as a member of the board of directors of LASX.
9. GENERAL PROVISIONS
a. GENERAL WARRANTIES, REPRESENTATIONS AND COVENANTS.
i. LASX warrants and represents that: (a) this
Agreement has been duly executed and received by a
duly authorized officer of LASX; and (b) subject to
Section 9(p) hereof, the performance of its
obligations hereunder, other than the issuance of the
Shares shall be, and, subject to shareholder approval
as provided in Section 9(p), the issuance of the
Shares as provided herein will be, duly authorized by
all necessary corporate action of LASX.
ii. Each of XLV and LASX represents and warrants
that the obligations and other terms specified in
this Agreement shall constitute legal, valid and
binding obligations and shall be enforceable against
it in accordance with their terms.
iii. XLV warrants and represents that this
Agreement has been duly executed and received by a
duly authorized officer of XLV and has been duly
authorized by all necessary corporate action of XLV.
iv. LASX warrants and represents that upon
delivery of the Shares pursuant to the terms of this
Agreement, such Shares will be duly authorized,
validly issued, fully paid and nonassessable, and
will not have been issued in violation of any
preemptive rights of any stockholder. The Shares to
be issued to XLV pursuant to this Agreement will be
issued free and clear of any lien, option or
preemptive or other right or claim.
v. LASX warrants and represents that LASX has
made available to XLV a true and complete copy of
each report, schedule, registration statement and
definitive proxy statement filed by LASX with the SEC
since December 31, 1996 and prior to or on the date
of this Agreement (the "SEC Documents"),
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which are all the documents (other than preliminary
material) that LASX was required to file with the SEC
between December 31, 1996 and the date of this
Agreement. As of their respective dates, the SEC
Documents complied in all material respects with the
requirements of the Securities Act of 1933, as
amended (the "Securities Act"), or the Securities
Exchange Act of 1934, as amended, as the case may be,
and the rules and regulations of the SEC thereunder
applicable to such SEC Documents, and none of the SEC
Documents contained any untrue statement of a
material fact or omitted to state a material fact
required to be stated therein or necessary to make
the statements therein, in light of the circumstances
under which they were made, not misleading as of the
date filed. The financial statements of LASX
included in the SEC Documents complied as to form in
all material respects with the published rules and
regulations of the SEC with respect thereto, were
prepared in accordance with generally accepted
accounting principles ("GAAP") applied on a
consistent basis during the periods involved (except
as may be indicated in the notes thereto or, in the
case of the unaudited statements, as permitted by
Rule 10-01 of Regulation S-X of the SEC) and fairly
present in accordance with applicable requirements of
GAAP (subject, in the case of the unaudited
statements, to normal, recurring adjustments, none of
which are material) the consolidated financial
position of LASX and its consolidated subsidiaries as
of their respective dates and the consolidated
results of operations and the consolidated cash flows
of LASX and its consolidated subsidiaries for the
periods presented therein.
vi. LASX represents that except as set forth in
the SEC Documents, as of the date hereof, there are
no liabilities of LASX of any kind whatsoever,
whether accrued, contingent, absolute, determined,
determinable or otherwise, that are reasonably likely
to have a material adverse effect on the financial
condition or results of operations of LASX, other
than: (i) liabilities provided for on the balance
sheet of LASX dated as of September 30, 1997
(including the notes thereto) contained in LASX's
Quarterly Report on Form 10-Q for the period ended
September 30, 1997; (ii) additional borrowings of
$2,991,000 under a Note Purchase Agreement among
LASX and Xxxxxxxxxx Associates II L.P.; (iii) the
acceleration of all payments due under a $2,100,000
Secured Promissory Note, dated December 26, 1996, to
the benefit of Xerox Corporation; (iv) liabilities
incurred in the ordinary course of business
subsequent to September 30, 1997; and (v) liabilities
under this Agreement.
b. NOTICES.
i. All payments, correspondence, notices, and
legal process delivered or deliverable pursuant to
this Agreement shall be in writing and deemed
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delivered: (i) upon personal or telecopy (with
receipt confirmed) delivery; (ii) three (3) days
after being sent by reliable overnight delivery; or
(iii) ten (10) days after being sent by certified
mail, postage prepaid, return receipt requested, to
the addresses set forth below:
If to XLV: Xxxx Xxxxxxx
President and COO
XL Vision, Inc.
00000 000xx Xxxxxxx
Xxxxxxxxx, Xxxxxxx 00000
If to LASX: Xxxxx X. Xxxxx
President and COO
LASERTECHNICS, INC.
Sandia Imaging Systems
0000 Xxxxxxxxx Xxxxx
Xxxxxxxxxx, Xxxxx 00000
ii. Either party hereto may change the address to
which notice is to be sent via written notice to the
other party in accordance with the provisions of
this section.
c. ENTIRE AGREEMENT. This Agreement contains the entire
understanding between the parties hereto concerning the
subject matter hereof, and supersedes and replaces all prior
negotiations and agreements, if any, both written and oral.
d. AUTHORITY. The individuals executing this Agreement
for and on behalf of XLV and LASX represent that they are
fully authorized and empowered to do so for and on behalf of
their respective principals.
e. SUCCESSORS AND ASSIGNS. This Agreement is intended
to benefit and shall be binding on XLV and LASX and their
respective successors and permitted assigns.
f. AMENDMENTS. No modification, amendment, waiver,
termination or discharge of this Agreement, or any of the
terms or provisions hereof, shall be binding upon either of
the parties unless confirmed by a written instrument signed by
both parties.
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g. NO WAIVER. No waiver by either party of any term or
provision of this Agreement or of any default hereunder shall
affect such party's rights thereafter to enforce such term or
provision or to exercise any right or remedy in the event of
any other default, whether or not similar.
h. SEVERABILITY. If any provision of this Agreement
shall be held void, voidable, invalid or inoperative, no other
provision of this Agreement shall be affected as a result
thereof, and accordingly, the remaining provisions of this
Agreement shall remain in full force and effect as though such
void, voidable, invalid or inoperative provision had not been
contained herein.
i. CONFIDENTIALITY. XLV and LASX agree to maintain all
terms and conditions of this Agreement in strictest
confidence, except as otherwise required by law, including the
public disclosure requirements of LASX under federal
securities law and applicable exchange or Nasdaq rules and
listing agreements. The parties agree that, except as
required by law, including the public disclosure requirements
of LASX under federal securities law and applicable exchange
or Nasdaq rules and listing agreements, neither LASX nor XLV
shall issue any publicly available reports, statements or
releases pertaining to this Agreement without the prior
consent of the other party, which consent shall not
unreasonably be withheld or delayed.
j. CUMULATIVE RIGHTS AND REMEDIES. Except as otherwise
provided in this Agreement, all rights and remedies herein or
otherwise shall be cumulative, and none of them shall limit
any other rights or remedies.
k. CHOICE OF LAW. The validity, performance, and all
matters relating to the effect of this Agreement and any
amendments hereto shall be governed by the laws of the State
of Texas without regard to choice of law provisions, statutes,
regulations or principles of this or any other jurisdiction.
l. NON-AGENCY RELATIONSHIP. It is understood and agreed
that no agency relationship is involved or created with
respect to this Agreement.
m. SURVIVAL. All representations, warranties and
covenants contained in this Agreement shall continue in full
force and effect and shall survive notwithstanding the full
payment of all amounts due hereunder or the termination of
this Agreement in any matter whatsoever.
n. HEADINGS. The headings contained herein are for the
convenience of the parties only and shall not be interpreted
to limit or affect in any way the meaning of the language
contained in this Agreement.
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o. LIMITATIONS ON LIABILITY. NOTWITHSTANDING ANY OTHER
PROVISIONS OF THIS AGREEMENT TO THE CONTRARY, IN NO EVENT
SHALL XLV OR LASX, ANY OF ITS OR THEIR AFFILIATES OR ANY OF
ITS OR THEIR DIRECTORS, OFFICERS, EMPLOYEES, AGENTS OR
SUBCONTRACTORS BE LIABLE FOR ANY SPECIAL, INDIRECT, INCIDENTAL
OR CONSEQUENTIAL DAMAGES OF XLV OR LASX OR ANY OF THEIR
RESPECTIVE AFFILIATES, EVEN IF XLV OR LASX OR SUCH AFFILIATE
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, OR FOR
PUNITIVE DAMAGES, LOSS OF ANTICIPATED PROFITS, SAVINGS OR
BUSINESS, LOSS OF COMMERCIAL REPUTATION OR OTHER ECONOMIC
LOSS, OR FOR DAMAGES THAT COULD HAVE BEEN AVOIDED, USING
REASONABLE DILIGENCE BY XLV OR LASX OR SUCH AFFILIATE.
p. SHAREHOLDERS MEETING(S) AND CHARTER AMENDMENTS
REQUIREMENTS. Except for LASX's obligation as specified in
Section 5(b)(i) of this Agreement, the rights and obligations
under this Agreement are expressly contingent upon the
approval by the stockholders of LASX at a meeting duly called
and held of (i) an amendment to the Charter of LASX to effect
a one-for-twenty reverse stock split of the issued and
outstanding shares of Common Stock, as described in the
preliminary proxy statement filed by LASX with the Securities
and Exchange Commission in January 1998 (the "Reverse Stock
Split"), and (ii) the issuance of the Shares to XLV in
accordance with the terms of this Agreement potentially
greater than 20% (twenty per cent) of LASX then outstanding.
q. PROPOSED REVERSE STOCK SPLIT. The parties
acknowledge that all references herein to the Shares of LASX
refer to the voting common stock, par value $.01 per share, of
LASX, after giving effect to the proposed Reverse Stock Split.
r. DEFAULTS AND REMEDIES.
i. LASX and XLV agree and understand that the occurrence
or existence of any one or more of the following
events will constitute a default by LASX:
(1) Material breach by LASX of any material
representation or warranty; or
(2) Material breach by LASX of any material
covenant after a thirty (30) day notice and
grace period to cure such breach.
ii. LASX and XLV agree and understand that the occurrence
or existence of any one or more of the following
events will constitute a default by XLV:
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(1) Material breach by XLV of any material
representation or warranty; or
(2) Material breach by XLV of any material
covenant after a thirty (30) day notice and
grace period to cure such breach.
iii. LASX and XLV agree that in the event of Default by
LASX, XLV shall have the following remedies:
(1) XLV may terminate the Agreement in addition
to remedies at law or equity subject to any
License Option or Exclusive License Option
exercised and continuing in effect. Any
License Option, Exclusive License Option, or
Assignment Option not previously exercised
shall terminate; and
(2) XLV may terminate this Agreement if Effective
Date does not occur by January 1, 1999.
iv. LASX and XLV agree that in the event of Default by
XLV, LASX shall have the following remedies:
(1) LASX may terminate the Agreement and cease
payments pursuant to Section 5(a)(v) in
addition to remedies at law or equity.
s. DISPUTE RESOLUTION. Any controversy or claim arising
out of or relating to this Agreement, or the breach thereof,
shall be settled by the following techniques in the order
provided:
i. Face-to-face good faith negotiations between Chief
Operating Officers of XLV and LASX;
ii. Mediation; and
iii. Binding arbitration in accordance with the Commercial
Arbitration Rules of the American Arbitration
Association, and judgment upon the award rendered by
the arbitrator(s) may be entered in any court having
jurisdiction thereof.
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IN WITNESS WHEREOF, the parties hereto have caused their respective
duly authorized representatives to execute this Agreement as of the date first
above written:
LASERTECHNICS, INC. XL VISION, INC.
("LASX") ("XLV")
By: /s/ By: /s/
---------------------------- ------------------------------------
Title: President Title: President
------------------------- ---------------------------------
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