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EXHIBIT 10.48
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this "Agreement') is made as of this 30th day of June,
1997, by and between NEOPTX, INC., a Washington corporation (referred to herein
as "Licensor'), on the one hand, and GARGOYLES, INC., a Washington Corporation
("Gargoyles") on the other hand.
RECITALS
A. Gargoyles has been issued a patent for and Adherent Corrective Lens
from the United States Patent and Trademark Office (the "PTO") under Patent
Number 5,478,824 (the "824 Patent"). Gargoyles has also filed a continuation in
part application in the PTO and has filed International patent applications in
Canada, Japan, and the European Patent Office, all of which are related to the
'824 Patent.
B. Xxxxx XxXxxx, owner of Neoptx, has filed a U.S. patent application,
Serial No. 08/163,678 on an adherent lens.
C. Gargoyles, Neoptx, Xx. XxXxxx, and LaHaye Laboratories are parties to
certain litigation pending in the United States District Court for the Western
District of Washington in Seattle under Cause No. C96-302R (the "Litigation").
In the Litigation, Gargoyles has alleged patent infringement, misappropriation
of trade secrets, and breach of a confidential relationship against Neoptx, Xx.
XxXxxx and XxXxxx Laboratories.
D. As part of a settlement of the Litigation and subject to the terms of
a Settlement Agreement executed by the parties of even date herewith, and to an
assignment document of even date herewith, and to the terms of this Agreement,
Gargoyles has agreed to assign the '824 Patent, and any related U.S. or
international patent applications to Licensor, and Licensor has agreed to
license all such assigned technology back to Gargoyles.
AGREEMENT
NOW, THEREFORE, in consideration of the premises and other good and
valuable consideration the receipt and sufficiency of which are hereby
acknowledged, the parties hereto hereby agree as follows:
1 . Definitions. When used in this Agreement, the following capitalized
terms shall have the meanings set forth below:
1.1 "Licensed Technology" shall mean any inventions disclosed or
claimed in (i) the '824 Patent, (ii) that certain patent application filed with
the
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PTO on June 7, 1995, Serial No. 08/484,265, (iii) any related patent
applications pending in foreign jurisdictions, including International patent
application PCT/US95/02123, European patent application EP 95911057.8, Canadian
Patent Application 2,182,975, and Japanese patent application 521975/95, (iv)
that certain patent application pending in the PTO filed by Xxxxx XxXxxx on
December 7, 1993, Serial No. 89/163,678 and (v) any and all continuations,
continuations-in-part, divisionals, reissues or extensions of the foregoing
patents and applications.
1.2 "Subsidiary" with respect to Gargoyles, shall mean any
corporation, limited liability company, or other legal entity, now or hereafter
existing, which is more than fifty percent (50%) owned by Gargoyles.
1.3 "Territory" shall mean the world.
2. Grant of License; Product Identification. Subject to the terms and
conditions of this Agreement, Licensor hereby grants to Gargoyles a nonexclusive
license to make, use, import, offer to sell, and/or sell products embodying the
Licensed Technology in the Territory ("the License"). Any product sold by
Gargoyles using the Licensed Technology shall display, somewhere on such product
packaging, a notice of the patent or patents under which the product is made by
license. Gargoyles may not grant any sublicense of this license.
3. Term. The License shall commence on the date of the execution of this
Agreement and shall continue during the life of any patents in the Licensed
Technology.
4. Royalty. Gargoyles shall be deemed to be fully paid up for this Grant
of License and shall owe no further royalty to Licensor whatsoever.
5. Infringements. The parties shall inform each other immediately upon
learning of any goods or activities which they believe to infringe Licensed
Technology. Upon learning or being informed of such infringement, Licensor shall
have the right, but not the obligation, at its sole discretion and expense, to
take such action as Licensor considers necessary or appropriate to enforce
Licensors rights in the Licensed Technology, including, without limitation,
legal action to suppress or eliminate such infringement or to settle any such
dispute or action. If however within 60 days of learning of or any such
potential infringement or of delivery of notice by Gargoyles to Licensor of any
such potential infringement, Licensor does not advise Gargoyles that it has
initiated appropriate action, or notifies Gargoyles that it will take no action,
to enforce its rights against those goods or activities, then Gargoyles shall be
permitted, at its own expense, to enforce such rights of Licensor, and Gargoyles
shall retain
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100% of any damage award, and/or settlement amount with respect to
such enforcement action instigated by Gargoyles.
6. Independence of the Parties. Neither Licensor nor Gargoyles shall be
construed to be the agent of the other in any respect, and nothing herein shall
be construed to place the parties in the relationship of partners, joint
venturers, agency or legal representation. Neither Licensor nor Gargoyles shall
have the authority to obligate or bind the other in any manner as to any third
party.
7. Assignability. The rights and obligations of Gargoyles under this
Agreement shall inure to the benefit of Gargoyles, its successors in interest
due to a transfer of substantially all of the stock or assets of Gargoyles, and
its Subsidiaries, and any reference to Gargoyles in this Agreement shall also
include such successors and Subsidiaries. Gargoyles shall not assign or transfer
any of its rights under this Agreement, and any attempted assignment or transfer
shall be null and void and of no effect.
8. Governing Law and Jurisdiction. This Agreement shall be governed by
and construed in accordance with the internal substantive laws of the state of
Washington applicable to agreements made and to be performed therein. The
parties hereby consent to the exclusive jurisdiction of the courts of the state
of Washington for resolution of all claims, differences, and disputes which the
parties may have regarding this Agreement.
9. Notice. All notices, requests, demands and other communications
required or permitted hereunder shall be in writing and shall be given by: (a)
hand delivery, (b) first-class registered or certified mail with postage
prepaid, (c) overnight receipted courier service, or (d) telephonically
confirmed facsimile transmission; which notice is addressed to the party at the
address set forth below, or such other address as may hereafter be designated in
writing by the party. Notices given in accordance with this Section shall be
effective upon receipt or when receipt is refused. Notice given to the party
listed below for Licensor shall be deemed effective notice to each party
comprising Licensor as if made individually to each such party.
If to Licensor, to: Xx. Xxxxx XxXxxx, President
Neoptx, Inc.
0000 000xx Xxxxxx XX
Xxxxxxx, XX 00000
If to Gargoyles, to: Xx. Xxxxxxx X. Xxxxx, President and CEO
Gargoyles, Inc.
0000 Xxxxx 000xx Xxxxxx
Xxxx, Xxxxxxxxxx 00000
Tel: 000-000-0000
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Fax: 000-000-0000
10. Amendments. This Agreement shall be amended only by a writing
executed by the parties hereto.
11. Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this License Agreement as
of the date first above written.
NEOPTX, INC.,
a Washington corporation
by: /S/ XXXXX X. XXXXXX
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its: President and CEO
GARGOYLES, INC.,
a Washington Corporation
by: /S/ XXXXXXX X. XXXXX
Xxxxxxx X. Xxxxx, President and CEO
