LICENSE AGREEMENT
-----------------
This Agreement is entered into by and between VISX, INCORPORATED, a
Delaware corporation ("LICENSOR"), and LASERSIGHT, INCORPORATED, a Delaware
corporation ("LICENSEE").
RECITALS:
---------
LICENSOR is the owner of certain patents and patent applications issued
in countries other than the United States (hereinafter Licensed Patents)
covering developments in the field of ophthalmological laser surgery generally
referred to as Phototherapeutic Keratectomy ("PTK") and Photorefractive
Keratectomy ("PRK").
LICENSEE or its Affiliates manufacture and sell, and desire to continue
to manufacture and sell, ophthalmological laser surgical equipment. LICENSOR and
LICENSEE are presently engaged in litigation in the Federal Court of Canada,
Trial Division, entitled VISX, Incorporated v. LaserSight, Incorporated, et.
al., No. T-1876-95 ("the Canadian Action"), wherein LICENSOR asserts and
LICENSEE denies that LICENSEE has infringed certain of the LICENSED PATENTS.
LICENSOR and LICENSEE wish to settle the Canadian Action and any other
disputes that may exist between them relating to said LICENSED PATENTS.
IT IS, THEREFORE, AGREED:
ARTICLE 1
GENERAL DEFINITIONS
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1.1 Affiliate. The term "Affiliate" shall mean, with respect to any
person or entity, any other person or entity that, directly or indirectly,
controls, is under common control with, or is controlled by that person or
entity. For purposes of this definition, "control" (including, with correlative
meaning, the terms "controlled by" and "under common control with"), as used
with respect to any person or entity, shall mean the possession, directly or
indirectly, of the power to direct and/or cause the direction of the management
and policies of such person or entity, whether through the ownership of voting
securities, by contract or otherwise.
1.2 Claim. The term "Claim" shall mean a patent claim which has not
expired and which has not been disclaimed, canceled, or finally held invalid or
unenforceable by a court of competent jurisdiction from which no further appeal
is possible or has been taken within the time period provided under applicable
law for such appeal.
1.3 Effective Date. The "Effective Date" of this Agreement shall be May
1, 1997.
1.4 Equipment Royalty. The term "Equipment Royalty" shall mean the
royalty to be charged for the sale, lease, and other disposition of Licensed
Products.
1.5 Excluded Patents. The term "Excluded Patents" shall mean any patent
issued in the United States, owned by LICENSOR or a LICENSOR Affiliate and
listed on Exhibit A or as to which the exclusive rights therein have been
granted to Pillar Point Partners.
1.6 LIBOR Rate. The term "LIBOR Rate" shall mean a fixed rate of
interest per annum offered for one-year dollar deposits in the London market, in
effect on the applicable date of reference thereto hereunder, as quoted in the
Wall Street Journal.
1.7 Licensed Patents. The term "Licensed Patents" shall mean and
include the patents and patent applications listed on Exhibit B attached hereto
together with all reissues, re-examinations, divisions, continuations,
continuations-in-part, renewals, extensions of, and additions thereto.
1.8 Licensed Procedure. The term "Licensed Procedure" shall mean any
procedure for performing ultraviolet laser corneal surgery which is performed
outside the United States and is covered by at least one Claim of a Licensed
Patent.
1.9 Licensed Product. The term "Licensed Product" shall mean any
ultraviolet light generating instrumentality that is covered by at least one
Claim of any Licensed Patent, including but not limited to the product(s) more
specifically described in Exhibit C. The term "ultraviolet light generating
instrumentality" when used in this agreement shall mean the entire machine used
for performing ultraviolet laser surgery, and not merely a component or other
part of such machine.
1.10 Net Selling Price. The term "Net Selling Price" shall mean, with
respect to any Licensed Product, the price for the Licensed Product, including
any component thereof (such as, without limitation, power supplies, gas tanks,
and software), excluding, without limitation, any bona fide charges with respect
to the Licensed Product for packing, transportation, insurance, installation,
training, duties, commissions to third-party distributors or representatives,
use or sales taxes, excise taxes, goods and services taxes, prompt payment
discounts, quantity discounts, amounts allowed for returns or credited for
trade-ins of Licensed Products on which a Equipment Royalty already has been
paid (or was not otherwise due), and other similar charges. For purposes of the
preceding sentence, the "price" for a Licensed Product and the related "charges"
shall be determined as follows:
(a) If LICENSEE or a LICENSEE Affiliate sells the Licensed
Product to a person or entity which is not LICENSEE's Affiliate, the
price shall be the amount paid to LICENSEE or the LICENSEE Affiliate
for the Licensed Product.
(b) If LICENSEE or a LICENSEE Affiliate leases the Licensed
Product or licenses the use of the Licensed Product to a person or
entity that is not a LICENSEE Affiliate, sells or leases or licenses
the use of the Licensed Product to a LICENSEE Affiliate, or sells,
leases, licenses the use of, or exchanges the Licensed Product for
consideration other than money, then the Net Selling Price for the
Licensed Product shall be the average actual Net Selling Price realized
by LICENSEE and its Affiliates during the immediately preceding twelve
(12) full calendar months for the same Licensed Products or comparable
Licensed Products of LICENSEE if no sales of the same Licensed Products
have occurred during that period. If there were no actual sale for
money of the same or comparable Licensed Product to a person or entity
that is not a LICENSEE Affiliate during the preceding twelve (12)
calendar months, then the Net Selling Price for the Licensed Product
shall be the average Net Selling Price realized by LICENSEE and its
affiliates during the twelve (12) months prior to and including the
date on which the last sale for money of the Licensed Product or a
comparable Licensed Product was made to a person or entity that is not
a LICENSEE Affiliate.
(c) If the Licensed Product is a component of a larger system
with components which are not Licensed Products, then the price with
respect to the component shall be the price at which LICENSEE or
LICENSEE's Affiliates ordinarily sell the component separately to their
customers. If LICENSEE does not sell the component separately, then the
price shall be the fair market value of the component as of the date of
the subject transaction. Any charges shall be allocated to the
component in the same proportion as the price of the component, as so
determined, bears to the price of the entire larger system.
(d) The price shall not include the price of service
contracts, replacement or ancillary components, such as laser
excitation gases, filters, patient disposables, and the like which may
be sold to LICENSEE's customers from time to time and which are not
themselves Licensed Products.
(e) On or before the date of the first report due under
Section 4.7 below, LICENSEE will provide to LICENSOR an example of
LICENSEE's calculations of the Net Selling Price for LICENSEE's current
Licensed Product.
1.11 Overdue Rate. The term "Overdue Rate" shall mean the LIBOR Rate,
plus three and one-half percent (3.5%).
1.12 Pillar Point Partners. The term "Pillar Point Partners" shall mean
the general partnership formed under an Agreement dated June 3, 1992 between
LICENSOR and Summit Technology, Inc.
1.13 United States. The term "United States" shall mean all fifty (50)
states of the United States of America, the District of Columbia, Puerto Rico
and any other territory or possession or US military base or installation of the
United States of America.
1.14 User. The term "User" shall mean any user of any Licensed Product
in a country other than the United States.
ARTICLE 2
RELEASES
--------
Subject to the payment of the initial payment as set forth in
Section 4.1 of this Agreement, LICENSOR does hereby fully release, acquit, and
forever discharge LICENSEE and LICENSEE's Affiliates and their respective
officers, directors, shareholders, agents, employees, customers, distributors,
dealers, vendees, suppliers, and Users from any and all claims or liability,
known or unknown, arising out of or related in any way to (a) any matter which
could be considered an infringement or form the basis of an action or claim of
infringement under the Licensed Patents occurring prior to the Effective Date
and/or (b) the manufacture, use, offer to sell, or sale of any ultraviolet light
generating instrumentality in any country in which any of the Licensed Patents
is issued as of the Effective Date. This Agreement effects a settlement of
claims which are contested and denied. Nothing herein shall be construed as an
admission by any party of any liability of any kind to the other party. This
Agreement shall not be admissible as evidence against any party hereto in any
proceeding other than in a proceeding to enforce an obligation of a party
hereunder. Notwithstanding anything herein to the contrary, the provisions of
this Article 2 shall survive the expiration or termination of the Agreement.
ARTICLE 3
GRANT
-----
3.1 Worldwide except the United States.
(a) Licensed Products. The LICENSOR hereby grants to LICENSEE
the non-exclusive right and license under the Licensed Patents to make,
have made, use, offer to sell, sell, lease and otherwise dispose of any
and all Licensed Products and other apparatus covered by the Licensed
Patents during the term hereof in all countries of the world except the
United States. The foregoing grant excludes the right to sublicense
with the following exceptions:
(i) LICENSEE shall have the right to sublicense any
of its rights under the foregoing grant to any one or more
LICENSEE Affiliate, on such terms and conditions as LICENSEE
in its sole discretion deems appropriate, to the full extent,
and subject to all the limitations and conditions (including
the obligation to pay Equipment Royalties), of the grant to
LICENSEE hereunder. Each sublicense to a LICENSEE Affiliate
under the immediately preceding sentence shall be treated as
if the applicable LICENSEE Affiliate separately entered into
this Agreement with the LICENSOR, but any such separate
agreement shall not be construed to diminish in any respect
LICENSEE's rights or obligations under this Agreement.
(ii) LICENSEE, and any Affiliate sublicensed in
accordance with Section 3.1(a)(i), shall have the right to
license, offer to sell, sell, lease, or otherwise dispose of
Licensed Products to Users, and other persons or entities
directly or indirectly through distributors or other resellers
or by other means.
(b) Licensed Procedures. The LICENSOR hereby grants to
LICENSEE the non-exclusive right and license under the Licensed Patents
to perform any and all Licensed Procedures during the term hereof in
all countries of the world except the United States. The foregoing
grant excludes the right to sublicense to others with the following
exceptions:
(i) LICENSEE shall have the right to sublicense any
of its rights under the foregoing grant to any one or more
LICENSEE Affiliate, on such terms and conditions as LICENSEE
in its sole discretion deems appropriate to the full extent,
and subject to all the limitations and conditions, of the
grant to LICENSEE hereunder. Each sublicense to a LICENSEE
Affiliate under the immediately preceding sentence shall be
treated as if the applicable LICENSEE Affiliate separately
entered into this Agreement with the LICENSOR, but any such
separate agreement shall not be construed to diminish in any
respect LICENSEE's rights or obligations under this Agreement.
(ii) LICENSEE, and any LICENSEE Affiliate sublicensed
in accordance with Section 3.1(b)(i), shall have the right to
sublicense Users, and other persons and entities to perform
Licensed Procedures.
(c) Labeling. LICENSEE or its applicable Affiliates shall
affix to each Licensed Product which is sold, leased, licensed or
otherwise disposed of after the Effective Date by LICENSEE or any
LICENSEE Affiliate any label reasonably requested by the LICENSOR
respecting the Licensed Patents. Nothing in this Agreement shall be
construed to prevent LICENSEE from pointing out that Licensee is the
manufacturer of the Licensed Product.
3.2 Excluded Patents.
(a) Notwithstanding anything herein to the contrary, nothing
in this Agreement shall be construed as granting LICENSEE or any
LICENSEE Affiliate a right to practice under any of the Excluded
Patents. The parties acknowledge that LICENSOR and Summit Technology,
Inc. ("SUMMIT") have exclusively licensed to Pillar Point Partners
their respective rights under their United States patents relating to
any ultraviolet light-generating instrumentality used to perform
corneal surgery. It is the stated policy of the Pillar Point Partners
to award third party sublicense agreements to all persons qualified to
make, have made, use, sell, lease and otherwise dispose of and perform
(including the right to license others to perform) procedures
practicing the subject matter defined by the so-licensed patents, on
reasonable, nondiscriminatory terms, consistent with those prevailing
in the market for apparatus or methods for performing ultraviolet laser
corneal surgery at the time any third party sublicense agreement is to
be entered into. All Pillar Point Partners decisions require, and are
made by, the unanimous agreement of LICENSOR and SUMMIT. Upon written
request by LICENSEE, LICENSOR agrees to use reasonable efforts to
secure for LICENSEE a third party sublicense from the Pillar Point
Partners on the terms available to third parties at that time.
(b) In the event that LICENSEE or its Affiliates acquire a
third party sublicense from Pillar Point Partners, then LICENSEE's
obligations to LICENSOR to pay royalties to LICENSOR on a Licensed
Product sold, leased or otherwise disposed of for use in the United
States shall be excused to the extent that LICENSEE actually pays
royalties on the same equipment to Pillar Point Partners.
3.3 Efforts. LICENSEE's only obligation under this Agreement with
respect to producing, promoting, selling and marketing Licensed Product is to
use such reasonable efforts as LICENSEE in the exercise of its sole discretion
deems appropriate.
3.4 Nonassertion. With respect to (a) any patent (other than the
Excluded Patents) issued in any country which on the Effective Date, LICENSOR
owns or under which it has the right to grant licenses or (b) any patent (other
than the Excluded Patents) which may later issue in any country other than the
United States on a pending patent application which, on the Effective Date or
during the term of this Agreement, LICENSOR owns or under which it has the right
to grant licenses, LICENSOR shall not assert any claims for infringement against
LICENSEE, any LICENSEE Affiliate, or any of their respective shareholders,
employees, agents, suppliers, vendees, licensees, lessees, customers or Users
based on the manufacture, sale, or use of any ultraviolet light generating
instrumentality upon which a royalty has been paid in accordance with Article 4.
The provisions of this Section 3.4 shall be binding upon and inure to the
benefit of the LICENSOR and LICENSEE and their respective successors and
permitted assigns.
3.5 Withdrawal of Pending Actions. Any claims or causes of action
between LICENSOR and LICENSEE for infringement of patents, which infringement
occurred prior to the Effective Date, shall be deemed to have been fully and
completely released and settled between them. The parties shall within thirty
(30) days of the execution of this Agreement consent to an order discontinuing
the Canadian Action and providing that each party will bear its own costs and
attorneys fees related to the action.
ARTICLE 4
PAYMENTS AND ROYALTIES
----------------------
4.1 Initial Payment. LICENSEE shall pay to LICENSOR, a non-refundable
sum in the amount of two hundred and thirty thousand four hundred dollars
(US$230,400.00) as payment for any and all claims or liability for the Release
set forth in Article 2, above. Such sum shall be payable in eight (8) equal
quarterly payments of twenty-eight thousand eight hundred dollars (US$28,800),
plus accrued interest on unpaid amounts as of the date of payment at the LIBOR
Rate in effect at the beginning of each quarterly period.
4.2 Equipment Royalty. With respect to all Licensed Products made,
used, sold, leased, or otherwise disposed of after the Effective Date of this
Agreement outside the United States, LICENSEE shall pay to LICENSOR an equipment
royalty as follows:
(a) for Licensed Products sold, leased or otherwise disposed
of for use outside of the United States, Canada or Japan, an Equipment
Royalty of six percent (6%) of the Net Selling Price of such Licensed
Products.
(b) for Licensed Products sold, leased or otherwise disposed
of for use in Japan, an Equipment Royalty of nine percent (9%) of the
Net Selling Price of such Licensed Products.
(c) for Licensed Products sold, leased or otherwise disposed
of for use in Canada, an Equipment Royalty of thirty thousand Canadian
dollars (CN$30,000.00) for each such Licensed Product sold, leased or
otherwise disposed of.
Without limitation, a Licensed Product shall also be deemed to be "otherwise
disposed of" if it is not sold but delivered by LICENSEE or a LICENSEE Affiliate
to others for consideration other than money (including by barter or exchange)
regardless of the basis of compensation, or put into commercial use by LICENSEE
or any LICENSEE Affiliate.
4.3 Equipment Royalty Credit. In the event that any Licensed Product
for which an Equipment Royalty has been paid by LICENSEE is returned and
accepted by LICENSEE for credit, LICENSEE shall be entitled to a credit from
LICENSOR for any Equipment Royalty paid to LICENSOR with respect to the returned
Licensed Product, provided each of the following requirements are satisfied by
LICENSEE:
(a) The particular Licensed Product was returned within one
hundred eighty (180) days after the installation thereof at the place
of business of the returning party; and
(b) LICENSEE makes a written application to LICENSOR for such
a credit in the form reasonably specified by LICENSOR from time to time
for such purpose, accompanied by documentary evidence in form and
substance reasonably acceptable to LICENSOR, confirming that the return
has occurred and that LICENSEE has made a refund of any payment
received by LICENSEE with respect to the returned Licensed Product.
4.4 Multiple Claims and Transactions. Anything in this Agreement to the
contrary notwithstanding, a single Equipment Royalty shall be payable under this
Agreement for each single Licensed Product, regardless of the number of Claims
of the Licensed Patents which that Licensed Product may embody, the number of
transfers (including transfers to any LICENSEE Affiliate) of that Licensed
Product, or any other circumstance. If the Net Selling Price for the Licensed
Product is payable in installments, under either an installment sale contract, a
lease, or any similar arrangement, then for purposes of the preceding sentence,
the sum of all Equipment Royalties payable with respect to all the installments
shall be considered a single Equipment Royalty.
4.5 Conversion to Licensed Product. If an ultraviolet laser apparatus
is not a Licensed Product at the time it is sold, leased, licensed or otherwise
disposed of by LICENSEE or any LICENSEE Affiliate, but a modification is made to
the apparatus by LICENSEE or any LICENSEE Affiliate to convert it into a
Licensed Product, then the event of modification shall be deemed a sale, lease,
license or other disposition of the apparatus occurring on the day of the
modification event for purposes of this Agreement. Thereupon, the apparatus so
becoming a Licensed Product shall be subject to the payment of an Equipment
Royalty pursuant to Section 4.2. However, for purposes of computing the
Equipment Royalty on that Licensed Product, the Net Selling Price thereof shall
be the cost of the apparatus when first sold, leased, licensed or otherwise
disposed of (depreciated on a straight-line basis over a five-year period), plus
the additional cost paid with respect thereto upon any modification thereof as
provided in this section, each such cost computed under the rules set forth in
the definition of the term Net Selling Price.
4.6 Deferred Payments of Equipment Royalties. If any Licensed Product
is sold, leased, licensed or otherwise disposed of in a transaction in which the
consideration therefor, and the Equipment Royalty with respect thereto, is
payable in installments, as herein contemplated, then:
(a) The Equipment Royalty payable pursuant to Section 4.6
shall be payable at the same royalty percentage as set forth in Section
4.2 applied to each installment payment as such installment payment is
received.
(b) The maximum amount of Equipment Royalty payable under
Section 4.6 with respect to the transaction shall be computed, as of
the date the transaction was entered into, on the aggregate of all
installments to be paid for the Licensed Product under the terms of the
transaction.
(c) Any portion of the Equipment Royalty computed under
Section 4.2 the payment of which is deferred under Section 4.6 shall
accrue interest during the period commencing on the date such
transaction was entered into and extending through the date of the
payment of the deferred portion, at the LIBOR Rate in effect from time
to time during that period.
(d) Each Equipment Royalty installment payable hereunder with
respect to the transaction shall be accompanied by a payment of any
interest accrued to the date of the Equipment Royalty installment due
date.
(e) It is understood that Sections 4.6 (c) and (d) shall only
apply if the installment sale, lease, license or other disposition does
not include a separately calculated finance charge, whether stated or
not, at least equal to the LIBOR Rate at the time the transaction is
entered into. If the finance charge is less than the LIBOR Rate at the
time of the transaction entered into, then such sections shall only
apply to compensate LICENSOR for the difference between such finance
charge and the LIBOR Rate.
4.7 Reports and Payments.
(a) Quarterly and Final Reports of Transactions.
(i) Within sixty (60) days after the end of each
calendar quarter, and within sixty (60) days after the
expiration of the term of this Agreement as provided in
Article 12, LICENSEE shall deliver to the LICENSOR a written
report pertaining to all transactions which occurred in that
calendar quarter, or in the period ending on such expiration
date for which a quarterly report has not previously been
furnished to the LICENSOR, as the case may be, with respect to
Licensed Products subject to Equipment Royalties.
(ii) Each report provided under this Section 4.7
shall:
(A) Contain information sufficient to
calculate all Equipment Royalties earned by the
LICENSOR during the period to which it relates with
respect to each category of Licensed Products.
(B) Contain any other information reasonably
specified by the LICENSOR from time to time.
(C) Be in form and substance acceptable to
reasonable requirements of the LICENSOR's independent
public accounting firm acting in such capacity from
time to time during the term of this Agreement.
(D) Be certified as to accuracy by the Chief
Financial Officer of LICENSEE or any other officer of
equal or higher rank.
(b) Payments. Within sixty (60) days after the end of each
calendar quarter, and within sixty (60) days after the expiration of
the term of this Agreement as provided in Article 12, LICENSEE shall
pay to the LICENSOR an amount equal to the sum of all Equipment
Royalties (plus applicable interest, if any) accrued and earned during
the calendar quarter, or during the period ending on the expiration
date, as the case may be. All payments shall be payable at LICENSOR's
address for notice specified in Article 8 or at such place as the
LICENSOR may designate in writing to LICENSEE from time to time.
(c) Taxes. If LICENSEE is required to withhold any taxes from
any sum payable to the LICENSOR hereunder, LICENSEE shall withhold such
taxes and pay same to the appropriate tax authorities for the account
of the LICENSOR. LICENSEE shall obtain, and promptly furnish to the
LICENSOR, a receipt evidencing each such tax payment.
(d) Form of Payment. All payments shall be paid in United
States dollars. Net Selling Price shall first be determined in the
currency in which the Licensed Products were manufactured and then
converted into its equivalent in United States currency each month, at
the average monthly conversion rate for such foreign currency computed
based on the conversion rates as published in The Wall Street Journal
for such month.
ARTICLE 5
REPRESENTATIONS AND WARRANTIES
------------------------------
5.1 LICENSOR's Representations. LICENSOR represents and warrants to
LICENSEE that LICENSOR is the sole and exclusive owner of the entire right,
title and interest in and to the Licensed Patents, subject to certain
non-exclusive licenses granted to qualified parties, and that LICENSOR has the
right to grant to LICENSEE the rights and licenses granted hereunder.
5.2 LICENSEE's Representations. LICENSEE represents and warrants to
LICENSOR that, as of the Effective Date, LICENSEE has not manufactured, used or
sold more than thirty-five (35) Licensed Products for use in any country in
which any of the Licensed Patents is issued as of the Effective Date. LICENSEE
further represents and warrants that the accessory equipment listed on Exhibit C
is always sold for a purchase price that is in addition to the purchase price of
the Licensed Product.
5.3 Mutual Representations. LICENSOR and LICENSEE each represents and
warrants to the other that it has full power and authority to enter into this
Agreement and carry out the transactions contemplated hereby.
ARTICLE 6
RECORDS AND INSPECTIONS
-----------------------
6.1 Records. LICENSEE shall keep and maintain complete books and
records, utilizing generally accepted accounting principles, and other accepted
accounting practices appropriate to the business being conducted by LICENSEE,
showing with respect to each Licensed Product sold, leased or otherwise disposed
of by LICENSEE or any LICENSEE Affiliate for the eight (8) most recent calendar
quarters prior to the date of any inspection pursuant to Section 6.2(b), all
information reasonably necessary to calculate each Equipment Royalty which is
payable to the LICENSOR under this Agreement.
6.2 Inspection.
(a) Selection of Inspector. The LICENSOR acting in good faith
shall, at its own expense, have the right at any time to designate an
internationally recognized accounting firm (an "inspector") who is
independent of LICENSOR and is reasonably approved by LICENSEE, without
unreasonable delay, to conduct an inspection as outlined in this
Section 6.2. LICENSOR shall provide LICENSEE reasonable advance notice
prior to conducting any inspection and such inspection shall only be
conducted during reasonable business hours.
(b) Scope of Inspection. The inspector shall have the right,
exercisable by the LICENSOR not more frequently than once every fiscal
year of LICENSEE during the term of this Agreement, on behalf of the
LICENSOR to inspect all books and records of LICENSEE and its
Affiliates maintained as required under Section 6.1, for the eight (8)
most recent calendar quarters prior to the date of such inspection, and
make copies of same as the inspector deems appropriate.
(c) Cooperation. LICENSEE hereby agrees to cooperate with any
inspection conducted by the inspector as herein provided and comply
with all reasonable requests of the inspector.
(d) Confidentiality Requirements. Prior to commencing any
inspection as herein permitted, LICENSEE may require the LICENSOR to
provide it with a written agreement, consistent with the provisions of
Articles 6 and 7 and signed by the inspector, under which the inspector
agrees to hold in confidence and not disclose to the LICENSOR, any of
its partners, any Affiliates of any partner or LICENSOR, or any other
person or entity, and not to use except for purposes of the inspection,
any confidential information provided to or acquired by the inspector
in connection with any such inspection, except that the inspector may
prepare a report of the results of the inspection which shall report to
LICENSOR only as to the accuracy of the Equipment Royalty computations
made in the report or reports being inspected.
6.3 Inspection Fee. If the LICENSOR orders an inspection of LICENSEE's
or its Affiliates' books and records under Section 6.2 which reveals that
LICENSEE has underpaid any Equipment Royalties due during the inspection period,
LICENSEE shall immediately pay to the LICENSOR the unpaid amount plus interest
on the underpaid amount for the period from the date the underpaid amount was
originally due to the date of payment thereof. If the underpaid amount is more
than ten (10%) of the Equipment Royalties actually paid to the LICENSOR during
the inspection period, then LICENSEE shall also pay to the LICENSOR the cost of
the inspection. If an inspection under Section 6.2 reveals that LICENSEE has
overpaid any Equipment Royalties due during the inspection period, LICENSOR
shall, at LICENSEE's election, either credit the overpayment to LICENSEE or
immediately pay to the LICENSEE the overpaid amount plus interest on the
overpaid amount for the period from the date of payment to the date of the
inspection.
ARTICLE 7
CONFIDENTIAL INFORMATION
------------------------
7.1 Confidential Information. LICENSOR shall not disclose to any third
party or use except in furtherance of this Agreement any confidential
information disclosed in connection with the Agreement by LICENSEE, or any
LICENSEE Affiliate, except that the LICENSOR may disclose any such confidential
information to the extent necessary to comply with its existing license
agreements or an order of a court or government agency, provided that, no later
than thirty (30) days after it is so ordered but in any case at least ten (10)
days prior to such disclosure, the LICENSOR notifies LICENSEE of its intention
to make the disclosure and precisely the confidential information the LICENSOR
intends to disclose and cooperates with LICENSEE on reasonable measures to
protect the confidentiality of such information. The LICENSOR shall take
reasonable steps to limit access to any such confidential information to only
persons having a need to know the confidential information for the purpose of
carrying out this Agreement and who are obligated to retain the confidentiality
of such information under a written agreement with LICENSOR on terms at least as
restrictive as the provisions contained herein. LICENSOR agrees to return to
LICENSEE upon termination or expiration of this Agreement all tangible copies of
confidential information acquired from LICENSEE or its Affiliates.
7.2 Non-Confidential Information. The LICENSOR and any inspector shall
be under no obligation with respect to any portion of such confidential
information which:
(a) Through no act or failure to act on the part of the
LICENSOR or the inspector, becomes known or available to the public.
(b) Is known by the LICENSOR or the inspector (preferably
shown by contemporaneous written records) prior to the time of
receiving such information.
(c) Is furnished to the LICENSOR by any person not legally
precluded from making the disclosure without restriction on disclosure.
ARTICLE 8
NOTICES
-------
Any notice given pursuant to this Agreement shall be in writing and,
except as otherwise expressly provided herein, shall be deemed to have been duly
delivered if delivered in person or by certified or registered or overnight
express mail, postage and mailing expense prepaid, or by facsimile transmission
with hard copy to follow by regular mail, and, if given or rendered to LICENSEE
addressed to:
LaserSight Incorporated
00000 Xxxxxxxx Xxxx
Xx. Xxxxx, XX 00000
Attention: President
and to:
LaserSight Technologies, Inc.
00000 Xxxxxxx Xxxxx
Xxxxx 000
Xxxxxxx, XX 00000
Attention: President
or, if given or rendered to LICENSOR addressed to:
VISX, Incorporated
0000 Xxxxxxx Xxxxxxxxxx
Xxxxx Xxxxx, XX 00000
Attention: Chief Executive Officer
Either party may specify a different address by notifying the other in writing
of such different address.
ARTICLE 9
MOST FAVORED LICENSEE
---------------------
If subsequent to the Effective Date, LICENSOR grants to another manufacturer of
excimer laser systems similarly situated to LICENSEE a license under any of the
Licensed Patents which provides to said manufacturer a more favorable Equipment
Royalty or Net Selling Price than that provided to LICENSEE for Licensed
Products, then LICENSEE may, at its option, adopt the more favorable Equipment
Royalty or Net Selling Price as of the effective date of such subsequent
license. Also, if subsequent to the Effective Date, LICENSOR grants another
manufacturer of excimer laser systems similarly situated to LICENSEE a license
under any of the Licensed Patents which provides to said manufacturer more
favorable other terms and conditions than those terms and conditions provided
herein to LICENSEE for Licensed Products, then LICENSEE may, at its option,
adopt the subsequent license in its entirety, mutatis mutandis, as of the
effective date of such subsequent license. LICENSOR shall notify LICENSEE in
writing of the execution of any such license agreement or amendment thereto
between LICENSOR and a third party which relates to the Licensed Patents within
thirty (30) days of the execution thereof. Such written notice shall include in
reasonable detail the terms of such license and LICENSOR's opinion as to the
applicability of this Article 9 to such license. LICENSEE shall be entitled to
demand confirmation, at LICENSEE's sole expense, from LICENSOR's inspectors that
the information provided to LICENSEE from the LICENSOR is reasonably complete
and accurate.
ARTICLE 10
INDEMNIFICATION
---------------
10.1 LICENSEE Indemnity. LICENSEE shall indemnify, defend and hold
harmless the LICENSOR, and its successors and assigns, from and against any
loss, damage, cost or expense of whatsoever kind or nature (including reasonable
attorneys' fees and professional expenses) incurred by the LICENSOR by reason
of:
(a) Any product liability claim arising out of the
manufacture, use, sale, lease, license or other disposition of Licensed
Products manufactured or marketed by LICENSEE or any LICENSEE Affiliate
or any distributor of LICENSEE or any LICENSEE Affiliate.
(b) Any breach by LICENSEE or any LICENSEE Affiliate of any of
its obligations under this Agreement.
The foregoing indemnification and agreement to defend and hold harmless shall
include, without limitation, any cost or expense incurred or to be incurred by
the LICENSOR by reason of its having been or being made a party or being
threatened to be made a party to any threatened, pending or completed action,
suit or proceeding, whether civil, criminal, administrative or investigative in
connection with any actual or alleged act or omission in connection with any
such manufacture, use, sale, lease or other disposition of Licensed Products or
performance of any Licensed Procedure. The foregoing indemnification and
agreement to defend and hold harmless shall not extend to (a) any acts or
omissions by or on behalf of the LICENSOR in bad faith or as a result of
negligence, (b) any claims relating to the validity or enforceability of any of
the Licensed Patents, or (c) any other claim not attributable to the conduct by
LICENSEE or its Affiliates of their respective business.
10.2 LICENSOR Indemnity. LICENSOR shall indemnify, defend and hold
harmless the LICENSEE, its Affiliates, and its successors and assigns, from and
against any loss, damage, cost or expense of whatsoever kind or nature
(including reasonable attorneys' fees and professional expenses) incurred by the
LICENSEE by reason of any breach by LICENSOR or any LICENSOR Affiliate of any of
its obligations under this Agreement.
10.3 Interest On Amounts Due. Any amount payable under any provision of
this Article 10, Article 4, or any other provision of this Agreement shall be
paid to the party entitled to the payment with simple interest at the Overdue
Rate, computed and payable for the period commencing, in the case of a payment
due under Article 4, sixty (60) days after the payment is due under that
Article, and in all other cases fourteen (14) days from the date on which the
party entitled to the payment demands payment in writing, through the date of
actual payment. In the case of any legal action between any of the parties, the
party prevailing in such action shall be entitled to receive, in addition to any
payment provided under other provisions of this Agreement, interest, compounded
quarterly, at the Overdue Rate on all costs incurred by the prevailing party in
maintaining or defending such legal action which are indemnified against under
any provision of this Article 10, for the period commencing on the date on which
any such cost is incurred until full payment thereof as otherwise provided in
this Article 10.
10.4 Other. A party claiming indemnification shall not be entitled to
indemnification with respect to any action to which it consented in writing or
any claim as to which it did not give written notice to the party from which
indemnification is sought within ninety (90) days after having received notice
of such claim. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY
INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES. In the event any claim for
indemnification arises from a claim of a third party, the party from whom
indemnification is sought shall have the right to defend against such third
party claim and, in such event, the party seeking indemnification shall
cooperate with all reasonable requests in the defense thereof at the expense of
the party from whom indemnification is sought.
ARTICLE 11
ASSIGNMENTS AND TRANSFERS
-------------------------
11.1 Transfers/Generally. Except as provided in this Article 11,
neither party has the right to assign or transfer any of its rights or to
delegate any of its obligations or duties under this Agreement without the
express written consent of the other party.
11.2 Transfers/Exceptions. Either party may assign all, but not less
than all, of its rights and obligations under this Agreement to any one or more
of its Affiliates, provided that each such Affiliate executes an instrument by
which it agrees to be bound by the provisions of this Agreement. In addition,
either party (and any of its assignees hereunder) may assign all, but not less
than all, of its rights and obligations under this Agreement to any successor by
way of merger, consolidation or acquisition of substantially all of the party's
assets associated with its Licensed Products and Licensed Procedures business,
which executes an instrument by which it agrees to be bound by the provisions of
this Agreement. Upon any such assignee's agreement to perform all of the
assigning party's obligations hereunder, the assigning party's liability
hereunder through the effective date of the assignment shall nevertheless
continue until expressly released by the non-assigning party, which release
shall not be unreasonably withheld. Nothing in this Section 11.2 shall prevent
LICENSEE from effecting a sublicense of less than all of its rights under this
Agreement as permitted in Sections 3.1(a) or 3.1(b) of this Agreement.
ARTICLE 12
TERM AND TERMINATION
--------------------
12.1 General. The term of this Agreement shall commence on the
Effective Date hereof and unless sooner terminated as herein provided shall end
on the date on which the last to expire of the Licensed Patents covering the
Licensed Products and/or Licensed Procedures.
12.2 Termination. LICENSEE shall have the right on each anniversary of
the Effective Date to terminate this Agreement or any of the licenses granted by
this Agreement, by providing to LICENSOR at least three (3) months advance
written notice of LICENSEE's intent to terminate. Such termination shall be
effective on the anniversary of the Effective Date following LICENSOR's timely
receipt of such notice.
12.3 Limited Survival of Agreement. Notwithstanding the expiration of
the term of this Agreement as provided in this Article 12, any provisions of
this Agreement with respect to the subject matter described below in this
Section 12.3 shall continue in effect after such expiration to the degree
necessary to permit their complete fulfillment or discharge.
(a) Any LICENSEE obligation to maintain records and to provide
all reports required under this Agreement which relate to any period
ending on or before such expiration, and the LICENSOR's right to
conduct any inspection with respect thereto.
(b) The LICENSOR's right to receive or recover, and LICENSEE's
obligation to pay, any amounts due to it under this Agreement which
accrued and were earned at any time prior to such expiration, including
any amounts which may be due by reason of any adjustment arising from
an inspection pursuant to this Agreement.
(c) Licenses, releases, and agreements of nonassertion or
immunity (running through the period ending on such expiration or such
later period as set forth herein) in favor of LICENSEE, its Affiliates,
Users, and any other person which acted on behalf of or for the benefit
of LICENSEE or its Affiliates with respect to Licensed Products or
Licensed Procedures.
(d) Any agreement, including under the provisions of Article
7, in effect at the time of such expiration with respect to
confidential information of any party to this Agreement.
(e) Any cause of action or claim or remedies of the LICENSOR
or LICENSEE arising from any breach of or failure to perform any
obligation under this Agreement.
(f) Any right, duty or obligation of either party hereto which
is expressly stated elsewhere in this Agreement to survive expiration or
termination hereof.
12.4 Failure to Pay; New Products.
(a) In the event of a failure by LICENSEE to make any payment
in full and in a prompt manner as provided in Article 4 of this
Agreement, if such failure is not corrected within thirty (30) days
after the date written notice complaining thereof is sent to LICENSEE,
the licenses granted to LICENSEE and its Affiliates and Users pursuant
to this Agreement and to which such non-payment pertains may, at
LICENSOR's option, be terminated forthwith by LICENSOR upon sending
written notice to that effect to LICENSEE.
(b) If, after the date of this Agreement, LICENSEE develops a
product which LICENSEE reasonably believes does not infringe the
Licensed Patents (a "New Product"), then LICENSEE may notify LICENSOR
of the development of the New Product and request LICENSOR to make a
determination as to the issue of infringement. Under such
circumstances, and notwithstanding anything in Section 12.4(a) to the
contrary, LICENSEE may pay the royalties due for the New Product into
an escrow fund established at Citibank N.A., New York, New York (or
such other financial institution as the parties may mutually agree),
pending the outcome of LICENSOR's evaluation of the New Product.
LICENSOR agrees to sign any reasonable confidentiality agreement
requested by LICENSEE before receiving proprietary information about
the New Product. If after six months following the establishment of the
escrow fund, LICENSEE and LICENSOR cannot agree whether the New Product
infringes the Licensed Patents, then the funds in escrow shall
automatically be paid over to LICENSOR, and the matter shall be
resolved using the dispute resolution proceedings set forth in Article
13. Nothing in this Section 12.4 shall affect LICENSEE's right to
terminate this Agreement as set forth in Section 12.2.
12.5 Insolvency. In the event that LICENSEE shall become insolvent, or
admit in writing its inability to pay its debts as they mature, or make an
assignment for the benefit of creditors, or be declared bankrupt, or go into
liquidation or receivership, or become a party to a dissolution proceeding or be
admitted to any statutory procedure for the settlement of its debts, and such
condition continues for at least sixty (60) days, such shall constitute a
material breach of this Agreement and LICENSOR shall have the right and option
upon sending written notice to LICENSEE to terminate forthwith the licenses
granted to LICENSEE and its Affiliates pursuant to this Agreement.
12.6 Default. In the event of a breach of any material obligation of
this Agreement by either party (other than a failure to pay by LICENSEE as
described at Section 12.4), the non-breaching party in such event may at its
option terminate any of the licenses to which the breach pertains upon ninety
(90) days written notice unless such default is corrected within ninety (90)
days after the date written notice complaining thereof is sent to the breaching
party.
12.7 No Release. Expiration or termination of this Agreement or the
licenses hereunder pursuant to this Article 12 shall not release either party
hereto from any liability which as of the date of expiration or termination has
already accrued to that party.
12.8 Sales After Termination. On termination or expiration of this
Agreement for any reason, LICENSEE shall have the right to sell, lease, license
or otherwise dispose of any remaining Licensed Products which it or any of its
Affiliates has in its possession or control, or which are in the process of
being manufactured, provided however, that LICENSEE shall remain obligated for
any and all amounts that would have be due LICENSOR hereunder but for the
termination or expiration of this Agreement upon the sale, lease, license or
other disposition of the Licensed Products.
12.9 Challenge. In the event that LICENSEE elects to challenge the
validity of any Licensed Patent during the term of this Agreement, LICENSOR
shall have the right to terminate this Agreement by providing at least one (1)
month advance written notice to LICENSEE of LICENSOR's intent to terminate, and
the termination shall be effective on the date provided in such written notice.
If LICENSOR does not exercise LICENSOR's right to terminate, LICENSEE agrees to
continue payment of royalties as required under this Agreement for as long as
LICENSEE elects to remain licensed under this Agreement.
ARTICLE 13
DISPUTES
--------
13.1 Mediation. In the event of any disagreement between LICENSOR and
LICENSEE arising out of the provisions of this Agreement (including a
disagreement about its existence, validity, enforceability, or interpretation)
which LICENSOR and LICENSEE are unable to resolve within a reasonable period of
time to settle amicably, either LICENSOR or LICENSEE may serve notice to the
other requiring the disagreement to be referred to mediators appointed by
J.A.M.S. in Santa Xxxxx County, California and approved by both LICENSOR and
LICENSEE and the disagreement shall be so referred to the mediators to
facilitate a resolution thereof.
13.2 Arbitration. Any controversy or claim not successfully mediated in
accordance with Section 13.1 and arising out of, in connection with or relating
to the interpretation, performance or breach of this Agreement or of any
document or agreement delivered under this Agreement, including any claim or
controversy based on contract, tort or statute, but excluding any claim or
controversy concerning the validity, coverage (i.e., range of protection) or the
interpretation of intellectual property rights under the laws of any nation
(which shall be governed by Section 13.4 below), shall be settled by
arbitration. Any controversy concerning whether a dispute is an arbitrable
dispute shall be determined by the arbitrator. The parties intend that this
agreement to arbitrate be valid, specifically enforceable and irrevocable. Such
arbitration shall be conducted in the City of New York, New York, in accordance
with the Commercial Arbitration Rules of the American Arbitration Association
(the "AAA"), as modified below:
(a) Disputes shall be heard and determined by a
single neutral arbitrator, who shall be a retired or former judge of
any Federal Court appointed under Article III of the United States
Constitution or a retired or former judge of the New York Court of
Appeals, selected in accordance with the Commercial Arbitration Rules
of the AAA, and disputes shall proceed under such rules, as
supplemented by the Supplementary Procedures for International
Commercial Arbitration.
(b) Neither party shall communicate separately with
the arbitrator. All communications between a party and the arbitrator
will be directed to the AAA for transmittal to the arbitrator.
(c) Any party to an arbitration may (i) seek any
provisional remedies available under the United States Federal
Arbitration Act, and (ii) petition the competent courts to confirm,
correct or vacate the award solely on the grounds stated in the United
States Federal Arbitration Act. Judgment upon the arbitrator's award
may be entered in any court having jurisdiction thereof and, where
applicable, shall be in accordance with the U.N. Convention on the
Recognition and Enforcement of Foreign Arbitral Awards.
(d) At the conclusion of the arbitration proceedings,
the arbitrator shall render an award in writing and shall specify the
factual and legal basis for the award.
(e) The arbitrator shall not be authorized or
entitled to include as part of any award any special, exemplary,
punitive or consequential damages, regardless of the nature or form of
the claim that has been submitted to arbitration.
13.3 Costs of Arbitration. The arbitrator shall award to the prevailing
party, if any, as determined by the arbitrator, all of such prevailing party's
costs and fees. "Costs and fees" means all reasonable pre-award expenses of the
arbitration, including the arbitrator's fees, administrative fees, travel
expenses, out-of-pocket expenses such as copying and telephone, court costs,
witness fees and reasonable attorneys' fees and expenses. Notwithstanding the
foregoing, the arbitrator may make such different award of costs and fees as the
arbitrator may determine is required under the indemnification provisions of
this Agreement.
13.4 Venue in Intellectual Property Disputes. With respect to any
dispute concerning the validity, coverage (i.e., range of protection) and the
interpretation of intellectual property rights under the laws of any nation,
such dispute shall be under the jurisdiction of the courts of the nation where
the intellectual property rights are protected.
ARTICLE 14
ENFORCEMENT
-----------
In the event that any of the Licensed Patents is infringed by a third
party, the party to this agreement having notice of such infringement shall
promptly notify the other in writing, which notice shall set forth the facts of
such infringement in reasonable detail. LICENSOR agrees to use its best efforts
to license any such infringer of the Licensed Patents or to take prompt
reasonable steps, including litigation, to xxxxx such infringement. LICENSOR
shall exercise its best efforts in diligently prosecuting such litigation. If
(but only if) LICENSOR fails to prosecute infringers according to this
Agreement, then no royalties shall accrue or be owing by LICENSEE in those
countries in which infringement occurs while such infringement continues to be
ongoing.
ARTICLE 15
GENERAL PROVISIONS
------------------
15.1 Binding Effect/Further Actions. The Agreement shall be binding
upon and inure to the benefit of the LICENSOR and LICENSEE and their respective
successors and permitted assigns. Each and every successor to the interest of
any party hereto shall hold such interest subject to the terms and provisions of
this Agreement.
15.2 Entire Agreement. This Agreement constitutes the entire agreement
of the parties hereto with respect to the subject matter hereof. This Agreement
supersedes any prior agreements or understandings among the parties hereof. It
may be amended or modified only by written instrument signed by all the parties.
15.3 Waiver. A failure by any party to insist upon the strict
performance of any covenant, duty, agreement or condition of the Agreement or to
exercise any right or remedy consequent upon a breach thereof shall not
constitute waiver of any such breach or any other covenant, duty, agreement or
condition.
15.4 Governing Law. The Agreement and the rights of the parties
hereunder shall be governed by and interpreted in accordance with the laws of
California.
15.5 Invalidity. If any provisions of this Agreement, or the
application of such provision to any person or circumstance, shall be held to be
invalid, the remainder of this Agreement, or the application of such provision
to such persons or circumstances other than those to which it is held invalid,
shall not be affected thereby, provided that such invalid provisions shall be
replaced by valid and enforceable provisions which will achieve as far as
possible the economic and business intentions of the parties to this Agreement.
15.6 No Agency. Nothing in this Agreement shall be deemed to appoint or
authorize LICENSEE to act as an agent of the LICENSOR or to assume or incur any
liability or obligation in the name or on behalf of the LICENSOR, this sentence
shall not be construed to in any manner diminish any rights granted to LICENSEE
under this Agreement.
15.7 Headings. The headings of the several articles and sections are
inserted for the convenience of reference only and are not intended to be a part
of or to affect the meaning or interpretation of this Agreement.
15.8 Singular/Plural. Whenever in the context it appears appropriate,
each term stated either in the singular or the plural shall include both the
singular and the plural.
15.9 Public Disclosure. Except for such disclosure as is deemed
necessary, in the reasonable judgment of legal counsel of a party hereto to
comply with applicable law or regulation and any disclosure to be provided by
LICENSEE to its Users, no announcement, news release, public statement,
publication or presentation relating to the existence of this Agreement, the
subject matter hereof, or either party's performance hereunder will be made
without the other party's prior written approval, which approval shall not be
unreasonably withheld. The parties agree that they will use reasonable efforts
to coordinate the initial announcement or press release relating to the
existence of this Agreement so that such initial announcement or press release
by each is made contemporaneously.
15.10 Assistance. LICENSOR and LICENSEE recognize that third parties
own and control patents in countries throughout the world other than the United
States which may relate to the Licensed Products manufactured by LICENSEE. While
LICENSEE is of the opinion that the Licensed Products presently manufactured
and/or sold by LICENSEE and its Affiliates do not infringe any of these third
party patents, in the event that any third party attempts to assert or asserts
any patent (other than Excluded Patents under this Agreement) against LICENSEE,
then LICENSOR, at LICENSEE's request, agrees to provide technical and legal
assistance to LICENSEE in defense of such attempt to assert or assertion.
LICENSEE agrees to reimburse LICENSOR for any and all costs and expenses
reasonably incurred by LICENSOR in providing such requested assistance.
15.11 Counterparts. This Agreement may be executed in separate
counterparts, each of which shall be considered an original but all of which
shall constitute one agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the dates
indicated.
LICENSEE
LaserSight Incorporated
By: /s/ Xxxxxxx X. Xxxxxx Date: 5/20/97
------------------------- --------------
Name: Xxxxxxx X. Xxxxxx
------------------------
Title: President & CEO
-----------------------
LICENSOR
VISX, Incorporated
By: /s/ Xxxxxxxxx Xxxxxx Date: 5/27/97
------------------------- --------------
Xxxxxxxxx Xxxxxx
Executive Vice President and
Chief Operating Officer
LIST OF ATTACHMENTS
-------------------
Exhibit A - Excluded Patents
Exhibit B - Licensed Patents
Exhibit C - Licensed Product
EXHIBIT A
to License Agreement Between
VISX, Incorporated and LaserSight, Incorporated
EXCLUDED PATENTS
1. All United States patents licensed to Pillar Point Partners
2. The following additional United States VISX patents:
Patent No. Application No. Title
---------- --------------- -----
4,885,471 185,867 Ultraviolet Radiometer
4,902,123 125,240 Topography Measuring Apparatus
4,905,711 165,535 Eye Restraining Device
4,916,319 185,152 Beam Intensity Profilometer
4,993,826 344,368 Topography Measuring Apparatus
4,998,819 347,348 Topography Measuring Apparatus
5,009,660 407,566 Gas Purging, Eye Fixation Hand Piece
5,106,183 416,136 Topography Measuring Apparatus
5,339,121 07/786,650 Rectilinear Photokeratoscope
5,474,548 091,670 Method of Establishing a Unique Machine
Independent Reference Frame for the Eye
5,391,165 833,604 System for Scanning a Surgical Laser Beam
5,286,964 945,207 System for Detecting, Correcting and
Measuring Depth Movement of a Target
5,283,598 842,879 Illumination of the Cornea for Profilometry
5,170,193 656,722 Apparatus and Method of Identifying Signals
in Biological Tissues
5,162,641 655,919 System and Method for Detecting, Correcting
and Measuring Depth Movement of Target
Tissue in a Laser Surgical System
5,157,428 719,924 Spectral Division of Reflected Light in
Complex Optical Diagnostic and Therapeutic
Systems
5,098,426 307,315 Method and Apparatus for Precision Laser
Surgery
5,054,907 456,109 Ophthalmic Diagnostic Apparatus and Method
5,048,946 523,799 Spectral Division of Reflected Light in
Complex Optical Diagnostic and Therapeutic
Systems
4,309,998 046,630 Process and Apparatus for Ophthalmic Surgery
3. All pending United States VISX patent applications
4. The following non-United States VISX patents and patent applications
Patent/Application No. Country Title
---------------------- ------- -----
2,080,668 Canada Rectilinear Photokeratoscope
EXHIBIT B
to License Agreement Between
VISX, Incorporated and LaserSight, Incorporated
LICENSED PATENTS
ARGENTINA (AR)
Application No. 328,108, filed 05/04/94
Application Xx. 0000000, xxxxx 00/00/00
XXXXXXX (XX)
Patent No. 0 151 869, expires 11/16/04
Patent No. 0 207 648, expires 06/05/06
Patent Xx. 0 000 000, xxxxxxx 00/00/00
XXXXXX (BR)
Application No. PI 9401668, filed 05/02/94
Application No. PI 9600020, filed 01/03/96
CANADA (CN)
Patent No. 1243732, expires 10/25/05
Patent No. 1254658, expires 05/23/06
Patent No. 1259105, expires 09/05/06
Patent No. 1271813, expires 07/17/07
Patent No. 1278046, expires 12/18/07
Patent No. 1288481, expires 09/03/08
Patent No. 1300689, expires 05/12/09
Patent No. 1308948, expires 10/20/09
Patent No. 1325832, expires 01/04/11
Application No. 2061976, filed 02/27/92
Application No. 2073802, filed 07/14/92
Application No. 2165515, filed 12/18/95
CHILE (CH)
Application No. 512-94, filed 04/12/94
Application No. 205595, filed 12/28/95
COLOMBIA (CO)
Application No. 015,296, filed 04/15/94
Application No. 95058,466, filed 12/12/95
EUROPEAN PATENT OFFICE (EP)
Application No. 92301690.1, filed 02/28/92, Publication No. 503802
Application No. 92307055.1, filed 08/03/92, Publication No. 529822
Application No. 94303256.5, filed 05/05/94, Publication No. 628298
Application No. 96300031.0, filed 01/03/96, Publication No. 000000
XXXXXX (FR)
Patent No. 0 151 869, expires 11/16/04
Patent No. 0 207 648, expires 06/05/06
Patent No. 0 218 427, expires 09/26/06
Patent No. 0 257 836, expires 07/31/07
Patent No. 0 274 205, expires 11/20/07
Patent Xx. 0 000 000, xxxxxxx 00/00/00
XXXXXXX (XX)
Patent No. P3491164.8 (EPO 0 151869), expires 11/16/04
Patent No. P3673470.5 (EPO 0 207648), expires 06/05/06
Patent No. P3687155.9 (EPO 0 218427), expires 09/26/06
Patent No. P3688792.7 (EPO 0 247260), expires 05/29/06
Patent No. P3782887.8 (EPO 0 257836), expires 07/31/07
Patent No. P3785568.9 (EPO 0274205), expires 11/20/07
Patent No. P68917998.7 (EPO 0 346116), expires 06/08/09
GREAT BRITAIN (GB)
Patent No. 0 151 869, expires 11/16/04
Patent No. 0 207 648, expires 06/05/06
Patent No. 0 218 427, expires 09/26/06
Patent No. 0 247 260, expires 05/29/06
Patent No. 0 257 836, expires 07/31/07
Patent No. 0 274 205, expires 11/20/07
Patent Xx. 0 000 000, xxxxxxx 00/00/00
XXXXXX (IS)
Patent No. 79223, expires 06/24/06
Patent Xx. 00000, xxxxxxx 00/00/00
Xxxxxx Xx. 00000, expires 06/24/06
Patent No. 80124, expires 09/23/06
Patent No. 83185, expires 07/14/07
Application No. 116,547, filed 12/25/95
ITALY (IT)
Patent No. 0 151 869, expires 11/16/04
Patent No. 0 207 648, expires 06/05/06
Patent Xx. 0 000 000, xxxxxxx 00/00/00
XXXXX (XX)
Patent No. 0000000, expires 12/25/05, Appl. No. 86132613,
Disclosure No. 62057549
Patent No. 1641615, expires 01/07/06, Appl. No. 86146259,
Disclosure No. 62053650
Patent No. 1684306, expires 07/08/06, Appl. No. 91044534,
Disclosure No. 63150069
Patent No. 1685517, expires 11/15/04, Appl. No. 91043904,
Disclosure No. 60119935
Patent No. 1685541, expires 05/15/06, Appl. No. 91033015,
Disclosure No. 62101247
Patent No. 1685545, expires 07/08/06, Appl. No. 91044533,
Disclosure No. 63073955
Patent No. 1689674, expires 07/02/06, Appl. No. 61154260,
Disclosure No. 63011130
Patent No. 1723225, expires 11/27/06, Appl. No. 89144287
Patent No. 1728594, expires 03/06/07, Appl. No. 88312126
Application No. 85019/92, filed 03/09/92
Application No. 237639/92, filed 08/14/92
Application No. 94972/94, filed 05/09/94
Application No. 352250/95, filed 12/28/95
NETHERLANDS (NE)
Patent No. 0 151 869, expires 11/16/04
Patent Xx. 0 000 000, xxxxxxx 00/00/00
XXXXX XXXXXX (SA)
Patent No. 84/7841, expires 05/29/08
Patent No. 86/4253, expires 06/06/06
Patent No. 86/4337, expires 06/10/06
Patent No. 86/4710, expires 06/24/06
Patent No. 86/7364, expires 09/26/06
Patent Xx. 00/0000, xxxxxxx 00/00/00
XXXXX XXXXX (XX)
Patent No. 62950, expires 09/25/01
Patent Xx. 00000, xxxxxxx 00/00/00
Xxxxxx Xx. 00000, expires 11/20/08
Patent No. 70796, expires 06/05/01
Patent No. 70795, expires 06/23/01
Application No. 3696/92, filed 03/06/92
Application No. 14394/92, filed 08/11/92
SPAIN (SP)
Patent No. 2002375, expires 09/25/06
Patent No. 555742, expires 10/27/07, Appl. No. 8801109
Patent No. 556431, expires 12/16/07, Appl. No. 8801981
Patent No. 556652, expires 09/02/07, Appl. No. 8800834
Patent No. 556680, expires 12/09/07, Appl. Xx. 0000000
XXXXXX (XX)
Patent No. 86304315.4 (0 207 648), expires 06/05/06
Patent No. 87310283.4 (0 274 205), expires 11/20/07
SWITZERLAND (SZ)
Patent No. 0 151 869, expires 11/16/04
Patent Xx. 0 000 000, xxxxxxx 00/00/00
XXXXXX (TW)
Patent No. 031283, expires 01/20/04
Patent No. 031324, expires 01/31/04
Patent No. 032592, expires 05/21/04
Utility Model No. 57303, expires 10/23/98
EXHIBIT C
to License Agreement Between
VISX, Incorporated and LaserSight, Incorporated
EXAMPLES OF LICENSED PRODUCTS
Compak-200 mini-excimer laser system
LS300 excimer laser system
Laser Scan 2000 excimer laser system
The following accessory equipment items are not considered part of the Licensed
Product and will not be included in the Net Selling Price:
1. Corneal Topography System
2. Video Eye Tracking System
3. Video Display Camera
4. Lensometer
5. Uninterrupted Power Supply
6. Doctor's Chair
7. Dehumidifier
8. Microkeratome
9. Patient Chair
