1
EXHIBIT 10.24
COMPROMISE, SETTLEMENT AND RELEASE AGREEMENT
This Settlement and Release Agreement ("Settlement Agreement") is
entered into as of this 25th day of October, 2000, by and between Xxxxxxx
Lifesciences LLC, ("Xxxxxxx"), Xxxxxx Healthcare Corporation ("Baxter"),
LaserSight Patents, Inc. ("LaserSight"), and The Spectranetics Corporation
("Spectranetics").
RECITALS
A. On or about August 6, 1999, Baxter initiated a lawsuit in the United
States District Court for the District of Delaware entitled Xxxxxx Healthcare
Corporation v. The Spectranetics Corporation, Case No. 99-512-RRM seeking
damages and injunctive relief for infringement of U.S. Patent No. 4,784,135 to
Xxxx et al (the "Xxxx patent"), U.S. Patent No. 4,686,979 to Gruen et al (the
"Gruen patent"), and U.S. Patent No. 4,891,818 to Levatter. On December 17,
1999, pursuant to agreement among the parties, Baxter filed a Second Amended
Complaint in that matter to include LaserSight and AccuLase, Inc. as plaintiffs.
B. On January 7, 2000, Spectranetics brought counterclaims in the same
matter seeking declaratory relief on antitrust violations, interference with
existing relationships and prospective economic advantage, and misuse of
confidential information. (The claims and counterclaims described in these
recitals A and B are referred to herein as the "Litigation.")
C. On March 15, 2000, Baxter assigned to Xxxxxxx all its interest in
the license agreements to the patent in suit and in the Litigation. Since that
date, Xxxxxxx has directed Xxxxxx'x attorneys in their conduct of the Litigation
and assumed the role of successor in interest to Baxter in connection with the
Litigation and the right in dispute therein.
D. By agreement dated October 25, 2000, a copy of which is attached
hereto as Exhibit A, the parties resolved the claim of infringement of U.S.
Patent No. 4,891,818 and agreed to the dismissal of all claims and counterclaims
respecting this patent and to the dismissal from the litigation of plaintiff and
counterdefendant AccuLase, Inc.
E. The parties hereto now desire to compromise and settle all matters
and controversies still outstanding between them, including, but not limited to,
all causes of action arising under the facts, claims and defenses set forth by
the parties in the Litigation or the conduct of the Litigation, and to release
one another from any and all obligations arising under, out of, or in any manner
connected with said facts, claims, defenses or conduct.
AGREEMENT
THEREFORE, in consideration of the foregoing facts and the promises and
mutual covenants contained herein and in the attached patent license agreement,
the parties, and each of them, subject to all of the terms, conditions and
matters hereof, agree as follows:
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
2
1. RELEASE OF SPECTRANETICS. LaserSight, Baxter, and Xxxxxxx, for themselves and
their shareholders, agents, employees, directors, officers, predecessors,
successors, and assignees, hereby releases and forever discharges, Spectranetics
and all present or former agents, employees, directors, officers, predecessors,
successors, and assignees of Spectranetics, of and from any and all claims,
debts, defenses, liabilities, costs, attorneys' fees, actions, suits at law or
equity, demands, contracts, expenses, damages, whether general, special
punitive, exemplary, contractual or extra contractual, and causes of action of
any kind and nature which LaserSight, Baxter, or Xxxxxxx may have against
Spectranetics and/or any present or former agents, employees, directors,
officers, predecessors, successors, and assignees of Spectranetics including,
but not limited to those claims asserted in and/or arising out of, directly or
indirectly, or in any other way connected with the Litigation or other
proceedings connected therewith.
2. RELEASE OF LASERSIGHT, BAXTER, AND XXXXXXX BY SPECTRANETICS. Spectranetics,
for itself and its shareholders, agents, employees, directors, officers,
predecessors, successors, and assignees, hereby releases and forever discharges
each of LaserSight, Baxter, and Xxxxxxx and all present or former agents,
employees, directors, officers, predecessors, successors, and assignees of said
released parties, of and from any and all claims, debts, defenses, liabilities,
costs, attorneys' fees, actions, suits at law or equity, demands, contracts,
expenses, damages, whether general, special, punitive, exemplary, contractual or
extra contractual, and causes of action of any kind and nature which
Spectranetics may now have against said released parties and/or any present or
former agents, employees, directors, officers, predecessors, successors, and
assignees of said released parties including, but not limited to those claims
asserted in and/or arising out of, directly or indirectly, or in any other way
connected with the Litigation or other proceedings connected therewith.
3. SETTLEMENT PAYMENTS.
(a) Spectranetics agrees to pay to Xxxxxxx the sum of [*]
payable as follows:
(i) [*] concurrently with the execution of this
agreement;
(ii) [*] on or before November 1, 2001; and
(iii) [*],on or before November 1, 2002.
(b) In the event that any amount payable under this Agreement
is not paid by the date payment is due, [*].
4. DEFAULT. In the event Spectranetics defaults in its obligation to pay any of
the sums payable under Paragraph 3 ("Default"), Spectranetics shall have ten
(10) calendar days to cure the Default (the "Grace Period"), after
Spectranetics' receipt of written notice of the Default sent via certified mail
to both Spectranetics and its counsel, Xxxxxxxx Xxxxx, as the following
addresses:
The Spectranetics Corporation
Attention: The President
00 Xxxxxxxx Xx.
Xxxxxxxx Xxxxxxx, XX 00000-0000
Telephone: (000) 000-0000
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
3
and
Xxxxxxxx Xxxxx, Esq.
Xxxxx, Xxxxxxx & Xxxxxx
00000 Xxxxxxxx, Xxxxx 000
Xxxxxxxxxx Xxxxx, XX 00000
Telephone: (000) 000-0000
Notwithstanding Paragraph 20 below, in the event that the Default is
not cured, after proper notice, within the Grace Period, then the License
Agreement attached hereto shall automatically terminate, at which time Xxxxxxx
shall obtain judgment and entry of judgment for default of the Settlement
Agreement as follows:
(a) Damages for breach of the Settlement Agreement in the
amount of [*]. Xxxxxxx shall give Spectranetics ten (10) days written notice
that it is seeking damages for Default, but Spectranetics expressly waives any
right to raise any issue or defense to entry of judgment other than the amount
of damages claimed by Xxxxxxx, or improper notice of Default and/or lack of
opportunity to cure within the Grace Period.
(b) [*]
The United States District Court for the District of Delaware shall
retain jurisdiction of this case to enforce the terms of the Settlement
Agreement in the event of a Default as set forth in this Paragraph 3.
5. LICENSE AGREEMENT. Concurrently with the execution of this Settlement
Agreement, Xxxxxxx and Spectranetics will execute a patent license agreement in
substantially the form attached hereto as Exhibit B (the "License Agreement").
6. TRANSFER OF CVX-300 LASERS. Immediately upon execution of this Agreement,
Spectranetics may collect from the United States Surgical Corporation warehouse
in Norfolk, Connecticut, fifteen (15) CVX-300 lasers belonging to Xxxxxxx,
identified in the xxxx of sale attached hereto as Exhibit C.
7. RELEASE OF UNITED STATES SURGICAL CORPORATION CLAIM. Concurrently with the
execution of this agreement, Xxxxxxx shall deliver to Spectranetics a release to
the benefit of Spectranetics of United States Surgical Corporation's claim
described in the notice letter from counsel for United States Surgical
Corporation to Xxx Xxxxxx, CEO of Spectranetics, dated October 6, 2000.
8. DISMISSAL OF LITIGATION. Upon execution of this Agreement, the parties shall
execute and Xxxxxxx shall promptly file with the United States District Court
for the District of Delaware a stipulated dismissal with prejudice in the form
attached hereto as Exhibit D.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
4
9. CHALLENGES TO VALIDITY, ENFORCEABILITY OR INFRINGEMENT. The parties desire
this Settlement Agreement and the License Agreement attached hereto to be a
complete and final disposition of all disputes between the parties respecting
the validity, enforceability, and infringement of the Xxxx and Xxxxx patents.
Accordingly, Spectranetics now expressly waives any right it might otherwise
have to contest in any judicial, administrative or other forum the validity or
enforceability of the Xxxx or Gruen patent or that the combination of the
Spectranetics model CVX-300 laser with the Spectranetics laser angioplasty
catheters and laser lead removal catheter sleeves or their use in their intended
manner infringe.
10. NO ADMISSION OF LIABILITY. This Settlement Agreement is entered into by the
parties solely for the purpose of compromising and settling the matters in
dispute between them. Neither this Settlement Agreement nor any of the
agreements attached hereto constitute an admission by any party of the truth or
validity of any claims, defenses, or contentions advanced by any party in the
Litigation.
11. ATTORNEYS' FEES. Each party shall bear its own costs and attorneys' fees
incurred with respect to the Litigation.
12. CHOICE OF LAW. This Settlement Agreement shall be construed and enforced in
accordance with the laws of the State of Delaware.
13. SEVERABILITY. If any provision of this Settlement Agreement is adjudicated
to be invalid, unenforceable or void for any reason whatsoever, each such
provision shall be severed from the remaining provisions and shall not affect
the validity or enforceability of such remaining provisions.
14. CONFIDENTIALITY. The parties, and each of them, and their counsel agree not
to publish or disclose the terms and conditions in this Settlement Agreement
except with the prior written permission of the other parties hereto and/or as
required by law or a court of competent jurisdiction. Each party may issue a
press release regarding settlement of the Litigation within ten (10) business
days of execution of this Settlement Agreement.
15. CONSTRUCTION. This Settlement Agreement and the agreements attached hereto
shall be construed as if all parties, and each of them, jointly prepared each
part, and any uncertainty or ambiguity shall not be interpreted against any one
party.
16. EXECUTION OF COUNTERPARTS. This Settlement Agreement may be executed in any
number of counterparts. All of such counterparts together shall constitute one
document at such time the counterparts are executed, which shall, in total,
contain the signatures of all the parties hereto.
17. MODIFICATIONS. This Settlement Agreement shall not be modified by any party
by any representation made before or after the execution of this Settlement
Agreement. All modifications must be in writing and signed by the parties and
each of them.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
5
18. ENTIRE UNDERSTANDING. This Settlement Agreement and the agreements attached
hereto contain the entire understanding and agreement between the parties with
respect to the matters referred to herein. No other representations, covenants,
undertakings, or other prior or contemporaneous agreements, oral or written,
respecting such matters, which are not specifically incorporated herein, shall
be deemed in any way to exist or bind any of the parties. The parties, and each
of them, acknowledge that they have not executed this Settlement Agreement in
reliance on any such promise, representation or warranty.
19. AUTHORITY OF SIGNATORIES. The undersigned acknowledge and represent that
they are duly authorized to execute this Settlement Agreement on behalf of
themselves and/or the party they represent. Further, this parties represent that
they have not assigned or transferred, to any person or entity, any claim or any
portion thereof, or interest therein, pertaining to the Litigation, and agree to
indemnify, defend and hold one another harmless from and against any and all
claims, based on or arising out of any such assignment or transfer, or purported
assignment or transfer, of any claims or any portion thereof or interest
therein.
20. ARBITRATION.
(a) Agreement to Arbitrate. Except as provided in Paragraph 4
above, all disputes arising out of or in connection with the execution,
interpretation, or performance of this Settlement Agreement shall, to the
fullest extent permitted by law, be solely and finally settled by binding
arbitration. The arbitration proceedings shall be held in Delaware and, except
as otherwise provided by this Paragraph 20, shall be conducted pursuant to and
in accordance with the commercial arbitration rules (the "Arbitration Rules") of
the American Arbitration Association (the "AAA").
(b) Notice of Arbitration. If any party determines to submit a
dispute to arbitration pursuant to this Paragraph 20, such party shall furnish
the AAA and the other parties with a dated, written statement indicating (i)
such party's intent to commence arbitration proceedings pursuant to this
Xxxxxxxxx 00, (xx) the name and address of such party and a designated officer
or agent thereof, (iii) the nature, with reasonable detail, of the dispute, (iv)
the remedy such party will seek, and (v) any other information required under
the Arbitration Rules.
(c) Selection of Arbitrator. The arbitrator, who shall be
selected in accordance with the procedures of the AAA, shall be a retired or
former judge who presided in a court located in the State in which the
arbitration is conducted.
(d) Award Final. To the extent permissible under applicable
law, the parties hereto agree that the award of the arbitrator shall be final
and shall not be subject to judicial review, except as permitted by Delaware
law. Judgment on the arbitration award may be entered and enforced in any court
having jurisdiction over the parties or their assets. It is the intent of the
parties that the arbitration provisions hereof be enforced to the fullest extent
permitted by applicable law.
(e) Availability of Injunctive Relief. Except as provided in
Paragraph 4 above, any party hereto may a court of competent jurisdiction to
grant provisional injunctive relief to such party solely for the purpose of
maintaining the status quo until an arbitrator can
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
6
render an award on the matter in question and such award can be confirmed by a
court having jurisdiction thereof.
LASERSIGHT PATENTS, INC.
DATED: October 27, 2000 By: /s/
---------------------------------------
DATED: October 26, 2000 By: /s/
---------------------------------------
XXXXXXX LIFESCIENCES LLC
DATED: October 25, 2000 By: /s/ Xxxxx X. Xxxxxx
---------------------------------------
THE SPECTRANETICS CORPORATION
DATED: October __, 2000 By: /s/ Xxxxxx X. Xxxxxx
---------------------------------------
APPROVED AS TO FORM:
XXXXXX, XXXX & XXXXXXXX LLP
DATED: October __, 2000 By: /s/ A. Xxxxx Xxxxxxxx
---------------------------------------
A. Xxxxx Xxxxxxxx
Attorneys for Xxxxxx Healthcare Corporation
and Xxxxxxx Lifesciences LLC
MORRIS, NICHOLS, ARSHT & XXXXXXX
DATED: October __, 2000 By: /s/ Xxxxxx X. Xxxxxx
---------------------------------------
Xxxxxx X. Xxxxxx, Xx.
Attorneys for LaserSight Patents, Inc.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
7
XXXXX, XXXXXXX AND XXXXXX PLL
DATED: October __, 2000 By: /s/ Xxxxxxxx Xxxxx
---------------------------------------
Xxxxxxxx Xxxxx
Attorneys for the Spectranetics Corporation
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
8
EXHIBIT A
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
9
SETTLEMENT AGREEMENT
Xxxxxx Healthcare Corporation, a Delaware corporation, Xxxxxxx
LifeSciences LLC, a Delaware Limited Liability corporation, and AccuLase, Inc.,
a California corporation, (collectively "plaintiffs") on the one hand and The
Spectranetics Corporation, a Delaware corporation, (defendant") on the other,
enter into this Settlement Agreement ("Agreement").
RECITALS
A. Plaintiffs and defendants are parties to the action Xxxxxx
Healthcare Corporation, et al. v. Spectranetics Corporation, District Delaware
CA No. 99-512RRM (the Litigation").
B. In the Litigation, plaintiff asserts that lasers, in particular the
CVX-300 laser, manufactured, used and distributed by defendant infringe U.S.
Patent No. 4,891,818 issued January 2, 1990 to Xxxxxxx X. Levattar (the "'818
Patent"). Defendant denies it infringes and asserts that the patent is invalid
and unenforceable. Plaintiff's deny that the patent is invalid or unenforceable.
C. The parties desire to settle their dispute regarding the `818 patent
pursuant to the terms and conditions set forth herein.
AGREEMENT
Now therefore the parties mutually agree as follows:
1. Plaintiffs, on behalf of themselves, their past and present agents,
officers, directors, employees, shareholders, subsidiaries, successors, and
assigns covenant that plaintiffs and each of them will not, at any time
hereafter, imitate, assign, maintain, or prosecute any claim, demand, or cause
of action for infringement of `818 patent by any laser defendant sells or has
sold commercially either currently or in the past. This covenant shall run to
the benefit of defendant, defendant's past and present agents, officers,
directors, employees, shareholders, subsidiaries, successors, or assigns,
defendant's customers or anyone using any of defendant's past or present
products.
2. Plaintiffs withdraw their claim of patent infringement set forth in
the First Cause of Action of Litigation and defendant withdraws its counterclaim
that the `818 patent is not infringed, invalid, or unenforceable as set forth in
the First Counterclaim for Relief in the Litigation.
3. Contemporaneously with the execution of this Agreement, each party
shall cause its counsel of record in the Litigation to execute the form of
Stipulation attached hereto as Exhibit A and counsel for plaintiffs shall then
file said executed Stipulation with the Court in which the Litigation is
pending.
4. Nothing herein shall be deemed to constitute a release by defendant
of any claim or counterclaim it may have arising from the assertion of the '818
patent against defendant. Nor shall the execution of this Agreement or the
attached Stipulation impair in any manner the right of any party to proceed with
any other claim or portion of a claim currently pending in this
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
10
action. In particular, the dismissals of paragraph 1 and 2, above, shall not
impair the right of Spectranetics to pursue its Second Counterclaim for Relief
on any or all grounds applicable or of plaintiffs' right to defend against any
such claim on any or all grounds applicable.
5. The parties hereto agree and acknowledge that the covenants and
other consideration of this Agreement, as well as the execution of the Agreement
itself, shall not be construed to be an admission as to the merits or lack of
merits of the parties' respective positions with respect to the `818 patent.
6. This Agreement and the accompanying Stipulation represent and
contain the entire agreement and understanding among the parties hereto with
respect to the subject matter of this Agreement and supercedes any and all prior
oral and written agreements and understandings. No representation, warranty,
condition, understanding or agreement of any kind with respect to the subject
matter shall be relied upon by the parties except those contained herein. This
Agreement may not be amended or modified except by an agreement signed by the
party against whom enforcement of any modification or amendment is sought.
7. In entering into this Agreement, the parties each acknowledge and
represent that they have sought and obtained the legal advice of their
attorneys, who are the attorneys of their own choice. They further represent
that the terms of this Agreement have been completely read by them, and that
those terms are fully understood and voluntarily accepted by them.
8. This Agreement shall be binding upon and inure to the benefit of the
parties' respective legal heirs, successors and assigns.
9. This Agreement shall remain strictly confidential. Each signatory to
this Agreement individually covenants not to disclose the terms of this
Agreement to any third party, except as may be required by a party's accountants
or insurers, or as required by law, without the written consent of the other
parties.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
11
10. This Agreement shall be governed by and construed according to the
laws of the State of Delaware applicable to contracts executed in the State of
Delaware.
October 17, 2000 XXXXXX HEALTHCARE CORPORATION
/s/
-------------------------------------------
October 4, 2000 XXXXXXX LIFESCIENCES, LLC
By: /s/ Xxxxxx Xxxx
--------------------------------------
Xxxxxx Xxxx
Director, Business Development
September __, 2000 ACCULASE, INC.
By: /s/ Xxxxxxx X'Xxxxxxx
--------------------------------------
Xxxxxxx X'Xxxxxxx
Chief Executive Officer
September __, 2000 THE SPECTRANETICS CORPORATION
By: /s/ Xxxxxx Xxxxxx
--------------------------------------
Xxxxxx Xxxxxx
President and Chief Executive Officer
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
12
EXHIBIT B
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
13
PATENT LICENSE AGREEMENT
This Patent License Agreement ("License Agreement") is entered into as
of this 25th day of October, 2000, by and between Xxxxxxx Lifesciences LLC,
("Xxxxxxx") and The Spectranetics Corporation ("Spectranetics").
RECITALS
X. Xxxxxxx is the exclusive licensee of U.S. Patent No. 4,784,135 to
Xxxx et al (the "Xxxx patent"), in the area of cardiovascular applications with
the right to grant sublicenses there under within this field. The Xxxx patent
expires seventeen (17) years from its date of issue, which is November 15, 2005.
X. Xxxxxxx is the exclusive licensee of U.S. Patent No. 4,686,979 to
Gruen et al (the "Gruen patent"), with the right to grant sublicenses
thereunder. The Gruen patent expires 17 years from its date of issue, which is
August 18, 2004.
C. Spectranetics wishes to obtain a right to practice the inventions of
the Xxxx and Xxxxx patents and Xxxxxxx is willing to grant Spectranetics
sublicenses to these patents.
AGREEMENT
NOW, THEREFORE, in consideration of the premises and the mutual
covenants hereinafter contained, the parties hereto agrees as follows:
1. DEFINITIONS
"DISPOSABLE" shall mean apparatus comprised, at least in part, or one
of more optical fibers, that is or may be coupled to a LASER, as hereinafter
defined, to guide the light emitted from that LASER to a treatment location
within a human or animal body. Such apparatus shall fall within the definition
of DISPOSABLE irrespective of whether it is intended for use in more than one
procedure.
"XXXXXXX" means Xxxxxxx Lifesciences, LLC, a Delaware limited liability
company, its divisions and any subsidiary in which it, directly or indirectly
holds a controlling interest. For the purposes of this definition, a controlling
interest shall be one sufficient to allow appointment of the majority of the
Board of Directors or other controlling body.
"XXXXXXX PATENTS" means: United States letters patent and foreign
industrial property affording comparable rights which, as of the Effective Date
and during the term of this Agreement, XXXXXXX owns or controls, or under which
XXXXXXX has the right to grant licenses of the scope herein granted.
Notwithstanding the above, the term XXXXXXX PATENTS does not include patents
under which XXXXXXX paid or is obligated to pay royalties or other consideration
to a third party or parties other than employees of XXXXXXX.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
14
"EFFECTIVE DATE" means October 1, 2000.
"LASER" shall mean any source of amplified, coherent light having a
wavelength between 100 and 400 nanometers.
"LICENSED XXXXXXX PATENTS" means the Xxxx and Xxxxx patents and any
divisions, reissues, continuations, continuations in part, renewals, and
extensions of any of these patents.
"LICENSED PRODUCTS" means LASERS, DISPOSABLES.
"SPECTRANETICS" means The Spectranetics Corporation, a Delaware
corporation, its divisions and any subsidiary in which it, directly or
indirectly holds a controlling interest. For the purposes of this definition, a
controlling interest shall be one sufficient to allow appointment of the
majority of the Board of Directors or other controlling body.
"SPECTRANETICS PATENTS" means: United States letter patent and foreign
industrial property affording comparable rights which, as of the Effective Date
and during the term of this Agreement, SPECTRANETICS owns or controls, or under
which SPECTRANETICS has the right to grant licenses of the scope herein granted.
Notwithstanding the above, the term SPECTRANETICS PATENTS does not include
patents under which SPECTRANETICS paid or is obligated to pay royalties or other
consideration to a third party or parties other than employees of SPECTRANETICS.
2. RELEASE
Subject to the obligation of SPECTRANETICS to make the payments as
specified in Compromise, Settlement and Release Agreement to which this License
Agreement is attached, Xxxxxxx hereby releases SPECTRANETICS and all purchasers
and users of LICENSED PRODUCTS acquired, mediately or immediately, from
SPECTRANETICS from all claims, demands and rights of action which XXXXXXX may
have on account of any infringement or alleged infringement of LICENSED XXXXXXX
PATENTS by the manufacture, use, or sale or other disposition of LICENSED
PRODUCTS, which, prior to the Effective Date hereof were manufactured, used,
sold, or otherwise disposed of by SPECTRANETICS.
3. LICENSE
3.1 Subject to the obligation of SPECTRANETICS to pay the royalties
specified in Article 4, hereof, XXXXXXX hereby grants to SPECTRANETICS a
non-exclusive, worldwide license, without the right to sublicense, to make, have
made, use, import, sell, offer for sale, or otherwise dispose of LICENSED
PRODUCTS, and to practice any method or process involved in the manufacture,
testing or use thereof, under the LICENSED XXXXXXX PATENTS.
3.2 XXXXXXX makes no warranty that the manufacture, use or sale of
LICENSED PRODUCTS by SPECTRANETICS will not infringe patent or other
intellectual property rights of third parties.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
15
3.3 Neither party makes any representation nor assumes any
responsibility or obligation regarding the scope, validity, or enforcement or
any of their respective PATENTS and the amount of any compensation heretofore
paid by SPECTRANETICS hereunder shall not be affected thereby.
4. ROYALTIES
4.1 In consideration of the license granted to SPECTRANETICS with
respect to the LICENSED XXXXXXX PATENTS, SPECTRANETICS shall pay to XXXXXXX the
following royalties:
(a) [*]; and
(b) [*]
4.2 [*]
4.3 In the event that all of the claims of the Gruen patent or all of
the claims of the Xxxx patent are declared invalid by judgment of a court of
competent jurisdiction that becomes final beyond further appeal, [*]. In the
event that all of the claims of the Gruen patent and all of the claims of the
Xxxx patent are declared invalid by judgment of a court of competent
jurisdiction that becomes final beyond further appeal, [*].
4.4 [*]
5. ACCOUNTING AND PAYMENT
5.1 SPECTRANETICS shall provide written statements to XXXXXXX within
ninety (90) days after the end of each quarter year ending the last day of
March, June, September and December of each year during the Term of this
Agreement (as hereafter defined), setting forth in each such statement: an
identification by product of the LICENSED PRODUCTS sold or otherwise disposed of
during the period to which the statement relates and upon which royalties are
payable as provided in subparagraph 4(a) above; the total unit numbers for such
sales; the NET SALES amount of LICENSED PRODUCTS; and the amount of the royalty
due. SPECTRANETICS shall also make such a written statement to XXXXXXX within
thirty (30) days after the date of expiration or any termination of this
Agreement. Payment of the royalty due shall accompany each statement provided
for herein.
5.2 SPECTRANETICS shall keep true and accurate records and books of
account showing the quantity of all LICENSED PRODUCTS sold or otherwise disposed
of under this License Agreement, and such records shall be in sufficient detail
to enable the royalties payable to XXXXXXX to be ascertained. XXXXXXX shall have
the option and right at any reasonable time to commission an independent third
party agreeable to SPECTRANETICS to examine and audit such records and books of
account to the extent necessary to verify the statements provided for in
Paragraph 5.1, above, such examination to be made at the expense of XXXXXXX.
SPECTRANETICS' agreement to such independent third party auditor shall not be
unreasonably withheld.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
16
5.3 In the event that any amount payable under this License Agreement
is not paid by the date payment is due, [*]. In the event that such late payment
results from an audit performed under Paragraph 5.2, above, then SPECTRANETICS
[*].
6. COVENANT NOT TO XXX
6.1 In consideration of the foregoing licenses, SPECTRANETICS hereby
covenants that it will not initiate or cause to be initiated against XXXXXXX,
XXXXXXX' customers, or any party working in privity with XXXXXXX any claim of
infringement of any of the SPECTRANETICS PATENTS arising out of activity of
XXXXXXX in the field of transmyocardial revascularization or percutaneous
transmyocardial revascularization. This covenant not to xxx shall survive
termination of this License Agreement, is binding upon any successors to
substantially all the assets of the XXXXXXX' transmyocardial revascularization
program.
6.2 XXXXXXX hereby covenants that it will not initiate or cause to be
initiated against SPECTRANETICS, SPECTRANETICS' customers, or any party working
in privity with SPECTRANETICS any claim of infringement of any of the XXXXXXX
PATENTS arising out of activity of SPECTRANETICS in the use, manufacture, or
sale of excimer laser except in the field of transmyocardial revascularization
or percutaneous transmyocardial revascularization. This covenant not to xxx
shall survive termination of this License Agreement, is binding upon any
successors or assigns to the XXXXXXX PATENTS, and runs to the benefit of any
successor to substantially all the assets of SPECTRANETICS.
7. TERM AND TERMINATION
7.1 Unless previously terminated in accordance with any of the
following provisions of this Article 4, this Agreement shall continue in full
force and effect until the expiration of the last to expire of the XXXXXXX
PATENTS.
7.2 In the event that either party fails or becomes unable to
substantially perform the obligations or undertakings to be performed by it
under this Agreement and such default or inability is not cured within thirty
(30) days after notice specifying the nature of the default, then the other
party shall have the right to terminate this Agreement.
7.3 In the event that SPECTRANETICS defaults in its obligation to pay
any of the sums payable under Paragraph 3 of the Settlement Agreement, this
License Agreement shall automatically terminate.
8. NOTICES
Any notice of communications required or permitted to be given
hereunder shall be in writing and shall be addressed, in the case of
SPECTRANETICS to:
The Spectranetics Corporation
Attention: The President
00 Xxxxxxxx Xx.
Xxxxxxxx Xxxxxxx, XX 00000-0000
Telephone: (000) 000-0000
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
17
and in the case of XXXXXXX to:
Xxxxxxx Lifesciences, LLC
Attention: The General Counsel
Xxx Xxxxxxx Xxx
Xxxxxx, XX 00000
Telephone: (000) 000-0000
or to such other address or addresses as either of these companies may from time
to time designate as its address by notice in writing to the other. All notices
so addressed are effective when received.
9. ASSIGNMENT OF AGREEMENT
Neither this Agreement nor any rights or licenses granted or extended
hereunder may be assigned, extended or otherwise transferred by either of the
parties hereto, nor shall they inure to the benefit of any trustee in
bankruptcy, receiver or other successor of such party, whether by operation of
law or otherwise, without the written consent of the other party, except that
all rights and obligations under this Agreement may be assigned in their
entirety to the successor to substantially all the business or assets of a party
to which this Agreement pertains, provided that such successor accepts the
assignment in writing.
10. APPLICABLE LAW
This Agreement shall be construed and the legal relations between the
parties hereto shall be determined in accordance with the laws of the State of
Delaware.
11. CONFIDENTIALITY
The parties hereto shall keep the terms of this Agreement confidential
and shall neither disclose now or hereafter, the terms of this Agreement to any
third party except:
(i) to any court or governmental body or agency compelling
such disclosure, but only to the extent so compelled; or
(ii) as otherwise may be required by any law and the rules or
regulations promulgated under such law; or
(iii) either party may convey to third parties that this
Agreement exists, and the fact that a patent license has been entered into
between SPECTRANETICS and XXXXXXX; provided that the compensation amount not be
disclosed.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
18
12. ARBITRATION
(a) Agreement to Arbitrate. All disputes arising out of or in
connection with the execution, interpretation, or performance of this License
Agreement shall, to the fullest extent permitted by law, be solely and finally
settled by binding arbitration. The arbitration proceedings shall be held in
Delaware and, except as otherwise provided by this Paragraph 12, shall be
conducted pursuant to and in accordance with the commercial arbitration rules
(the "Arbitration Rules") of the American Arbitration Association (the "AAA").
(b) Notice of Arbitration. If any party determines to submit a dispute
to arbitration pursuant to this Paragraph 12, such party shall furnish the AAA
and the other parties with a dated, written statement indicating (i) such
party's intent to commence arbitration proceedings pursuant to this Xxxxxxxxx
00, (xx) the name and address of such party and a designated officer or agent
thereof, (iii) the nature, with reasonable detail, of the dispute, (iv) the
remedy such party will seek, and (v) any other information required under the
Arbitration Rules.
(c) Selection of Arbitrator. The arbitrator, who shall be selected in
accordance with the procedures of the AAA, shall be a retired or former judge of
who presided in a court located in the State in which the arbitration is
conducted.
(d) Award Final. To the extent permissible under applicable law, the
parties hereto agree that the award of the arbitrator shall be final and shall
not be subject to judicial review, except as permitted by Delaware law. Judgment
on the arbitration award may be entered and enforced in any court having
jurisdiction over the parties or their assets. It is the intent of the parties
that the arbitration provisions hereof be enforced to the fullest extent
permitted by applicable law.
(e) Availability of Injunctive Relief. Any party hereto may request a
court of competent jurisdiction to grant provisional injunctive relief to such
party solely for the purpose of maintaining the status quo until an arbitrator
can render an award on the matter in question and such award can be confirmed by
a court having jurisdiction thereof.
13. ENTIRE AGREEMENT AND AMENDMENTS
This instrument contains the entire and only agreement between the
parties respecting the subject matter hereof and supersedes and cancels all
previous negotiations, agreements, commitments and writings in respect thereto.
This Agreement may not be amended, supplemented, released, discharged,
abandoned, changed or modified in any manner, orally or otherwise, except by an
instrument in writing of concurrent or subsequent date signed by duly authorized
officers or representative of each of the parties hereto.
IN WITNESS WHEREOF, each of the parties hereto has caused this
Agreement to be executed in duplicate, on the date first written above, by its
duly authorized officers or representatives.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
19
THE SPECTRANETICS CORPORATION XXXXXXX LIFESCIENCES, LLC
By: /s/ Xxxxxx X. Xxxxxx By: /s/ Xxxxx X. Xxxxxx
---------------------------- --------------------------------------
Name: Name: Xxxxx X. Xxxxxx
-------------------------- ------------------------------------
Title: Title: Corporate V.P. and General Counsel
------------------------- -----------------------------------
Date: Date: October 25, 2000
-------------------------- ------------------------------------
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
20
EXHIBIT C
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
21
Exhibit C
XXXX OF SALE
1. DEFINITIONS.
All capitalized terms not defined herein shall have the meanings
ascribed to them in that certain Settlement and Release Agreement (the
"Agreement") of even date herewith, by and between Xxxxxxx Lifesciences LLC
("Seller"), Xxxxxx Healthcare Corporation, LaserSight Patents, Inc., and The
Spectranetics Corporation ("Buyer").
2. XXXX OF SALE.
Pursuant to the Agreement and for good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, Seller hereby grants,
sells, conveys, transfers, assigns and delivers to Buyer all of its right, title
and interest to the CVX-300 Lasers described in Schedule 1 attached hereto.
The sales and assignments hereunder are made in accordance with and
subject to the representations, warranties, covenants, and provisions contained
in the Agreement.
This instrument shall be governed by and construed in accordance with
the laws of the State of Delaware without regard to its
conflicts-of-laws principles.
1N WITNESS WHEREOF, Seller has executed and delivered this Xxxx of Sale
as of the 25th day of October 2000.
Xxxxxxx Lifesciences LLC
By: /s/ Xxxxx X. Xxxxxx
------------------------------------
Name: Xxxxx X. Xxxxxx
-----------------------------------
Title: Corporate V.P. and General Counsel
----------------------------------
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
22
SCHEDULE I
CVX-300 LASERS
No. Serial Number Location of Laser
--- ------------- -----------------
1 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx
0 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx
0 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
0 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
0 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
0 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
0 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
0 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
0 0000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
00 00000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
00 00000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
00 00000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
00 00000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
00 00000 Xxxxxx Xxxxxx Surgical Corporation, Xxxxxxx, XX
00 00000 Xxxxxx Xxxxxx Surgical Corporation, Norfolk, CT
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
23
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
XXXXXX HEALTHCARE CORPORATION, a Delaware )
Corporation; LASERSIGHT PATENTS, INC., a Delaware)
corporation; and ACCULASE CORPORATION, a )
California corporation ) Civil Action No. 99-512 RRM
)
Plaintiffs, )
)
v. )
)
THE SPECTRANETICS CORPORATION, a Delaware )
corporation )
)
Defendant. )
)
)
)
-------------------------------------------------
STIPULATED DISMISSAL WITH PREJUDICE
Plaintiffs Xxxxxx Healthcare Corporation, and LaserSight Patents, Inc.
and defendant The Spectranetics Corporation, having settled their
differences, hereby stipulate, through their respective counsel, to the
dismissal with prejudice of all claims and counterclaims pending
herein, and that the above-captioned court shall retain jurisdiction to
enforce this settlement. Each party hereto is to bear its own attorneys
fees and costs.
October ___, 2000 POTTER XXXXXXXX & XXXXXXX LLP
By: /s/ Xxxxxxx X. Xxxxxxx
-----------------------------------------
Xxxxxxx X. Xxxxxxx (#2246)
Hercules Plaza
0000 Xxxxx Xxxxxx Xxxxxx
Post Office Xxx 000
Xxxxxxxxxx, Xxxxxxxx 00000-0000
(000) 000-0000
Attorneys For Plaintiffs and
Counter-Defendants Xxxxxx Healthcare
Corporation and
24
October 27, 2000 XXXXXX XXXXXXX ARSHT & XXXXXXX
By: /s/ Xxxxxx X. Xxxxxxx Xx.
-----------------------------------------
Xxxxxx X. Xxxxxxx Xx. (437)
0000 X. Xxxxxx Xx. X.X. Xxx 0000
Xxxxxxxxxx, XX 00000-0000
(000) 000-0000
Attorneys For Plaintiff and Counter-Defendant
LaserSight Patents, Inc.
October 27, 2000 XXXXXX XXXXX XXXXXXXX & XXXXXXXX LLP
By: /s/ Xxxxxxx X. Xxxx
-----------------------------------------
Xxxxxxx X. Xxxx (#922)
000 Xxxxxxxx Xxxxxx
X.X. Xxx 0000
Xxxxxxxxxx, Xxxxxxxx 00000
(000) 000-0000
Attorneys For Defendant and Counterclaimant
The Spectranetics Corporation
DISMISSAL
Upon the consent of the parties and good cause appearing therefor,
THIS CASE IS HEREBY DISMISSED WITH PREJUDICE. The Court shall retain
jurisdiction for the limited purpose of enforcing the terms of the settlement
agreement.
October ___, 2000 /s/ Xxxxxxxx X. XxXxxxxx
-----------------------------------------------
Xxx. Xxxxxxxx X. XxXxxxxx
United States District Judge