ASSET PURCHASE AGREEMENT
This Asset Purchase Agreement ("Agreement"), is entered into as of 19
June 2006 (the "Effective Date") by and between the following parties
(collectively, the "Parties"):
Implantable Vision, Inc. a Utah Corporation with a principal office at
00000 Xxxxxx Xx., Xxxxx Xxxxxxx, XX 00000 ("IMPLANTABLE VISION"), and,
CIBA Vision AG, a Swiss corporation with offices at Xxxxxxxxxxxxx 00,
XX-0000, Xxxxxxx, Xxxxxxxxxxx ("CIBA")
Whereas, CIBA desires to convey to IMPLANTABLE VISION and IMPLANTABLE
VISION desires to acquire from CIBA certain intangible assets relating to CIBA's
ophthalmic surgical products business;
Now, therefore, in consideration of the obligations undertaken by each
party and other good and valuable consideration, and intending to be legally
bound, the Parties hereby agree as follows:
1. Definitions
As used in this Agreement, the following terms shall have the meanings
set forth below:
1.1. "Affiliate" means any person or legal entity controlling, controlled
by, or under common control with a party to this Agreement.
1.2 "Assets" means CIBA's U.S. and Japanese rights, title and interest to
the following:
1.1.1 "Patent Rights"
1.1.1.1 US Patent No. 6,706,066: Floating phakic refractive lens
design for preserving eye dynamics;
1.1.1.2 US Patent No. 6,015,435: Self-centering phakic intraocular
lens;
1.1.1.3 US Patent No. 6,428,574: Self-centering phakic intraocular
lens;
1.1.1.4 US Patent No. 6,506,212: Anatomically compatible posterior
chamber phakic refractive lenses;
1.1.1.5 US Patent No. 6,638,307: Methods of surface treatment for
enhancing the performance of a floating phakic refractive lens design.
1.1.1.6 Japanese Application No. 2001-51980
1.1.1.7 Japanese Application No. 10-519657
1.1.1.8 Japanese Application No. 2002-508351
1.1.1.9 Japanese Application No. 2001-548033
These patent rights are and shall remain subject to a nonexclusive
license to Medennium Corporation to manufacture the Products. A
copy of the license agreement has been provided to IMPLANTABLE
VISION.
1.1.2 Sponsorship of the US FDA trial Investigational Device Exemption
IDE G980278 for ongoing PRL clinical trial and related FDA
documentation.
1.1.3 PRL Trademark in US (US Reg. No. 0000000) and Japan (Japanese
Registration No 4614342 )
1.2. "Closing" means the consummation of the purchase and sale of the
Assets and related transactions contemplated under this Agreement.
1.3. "Closing Date" means the time and date on which the Closing becomes
effective.
1.4. Net Sales means shall mean the amount billed by IMPLANTABLE VISION,
its Affiliates and any licensee to third parties for the sale of
Products, less cash discounts and/or quantity discounts allowed;
credits for customers; returns and allowances; charges for freight,
handing and transportation separately billed; and sales and use taxes
and other similar taxes incurred; all as determined in accordance with
generally accepted GAAP accounting principles in the US. Net Sales
shall be converted to US Dollars based on the applicable exchange rate
published in the Wall Street Journal as of the last day of the
applicable calendar quarter.
1.5. "Products" means any Phakic Refractive Lens (PRL) for the treatment of
myopia and hyperopia, for commercial sale in the US and Japan that
includes or is based upon the ASSETS and any other PRL that would
otherwise infringe the Patent Rights.
1.6. "Total Royalty Period" means the period commencing upon the Effective
Date of the Definitive Agreement and extending seven (7) years or
until the expiry or invalidation of each and every of the Patent
Rights on a country by country basis, whichever comes first.
2. CONVEYANCE OF ASSETS
2.1. Purchase and Sale. Upon the terms and subject to the conditions of
this Agreement, CIBA shall sell, assign, transfer, convey and deliver
to IMPLANTABLE VISION, and IMPLANTABLE VISION shall purchase, acquire
and accept, all right, title and interest of CIBA in and to the Assets
as of the Closing Date.
No other Conveyance. CIBA and IMPLANTABLE VISION expressly acknowledge and agree
that, except for the Assets, no other tangible or intangible property, rights,
or licenses are intended or shall be conveyed to CIBA pursuant to this
Agreement.
CONSIDERATION.
In consideration for the conveyance of the Assets pursuant to
Article 2, IMPLANTABLE VISION shall:
2.1. Pay CIBA ONE MILLION US Dollars ($1,000,000) by wire transfer from an
Escrow account on the Closing Date; and
2.2. For a period of two (2) years following the Effective Date ("First
Royalty Period"), Implantable Vision shall pay CIBA a royalty of eight
and one-half percent (8.5%) of Net Sales of Products. For the three
(3) years following the First Royalty Period ("Second Royalty Period")
Implantable Vision shall pay a royalty of seven percent (7%) of Net
Sales. After the Second Royalty Period, Implantable Vision shall pay
CIBA a royalty of five percent (5%) of Net Sales until the end of the
Total Royalty Period. Royalties will be due quarterly, thirty (30)
days after quarter end until the expiry of the Total Royalty Period.
Royalties will be paid only where the Products are sold and one or
more of the patents are not declared invalid by a court of competent
jurisdiction and all rights of appeal are exhausted.
3. ASSIGNMENT OF ASSETS
3.1. Assigned Assets. As of the Closing Date, CIBA shall assign to
IMPLANTABLE VISION all of the rights and interests CIBA possesses in
and under the Assets subject to the existing license and IMPLANTABLE
VISION shall assume all of the liabilities and obligations of CIBA
arising out or relating to the Assets as of or following the Closing
Date.
3.2. No Continuing Obligations. Following the closing, Implantable Vision
shall be solely responsible for prosecution, maintenance and defense
of the patents, patent applications and trademarks that are described
as Assets. Implantable Vision shall be solely responsible for pursuit
of any further actions with respect to IDE G980278 and any liabilities
related to the clinical trial.
3.3. Patent Maintenance. In the event IMPLANTABLE VISION chooses to abandon
Patent Rights, IMPLANTABLE VISION shall give written notice to CIBA at
least ninety (90) days prior to abandonment. In the case of such
notice of intent to abandon by Implantable Vision, CIBA may take back
title to Patent Rights by notifying IMPLANTABLE VISION within ninety
(90) days after IMPLANTABLE VISION's notice of intent to abandon and
paying the required maintenance fees
4. REPRESENTATIONS AND WARRANTIES OF CIBA
CIBA hereby represents and warrants to IMPLANTABLE VISION as follows:
4.1. Corporate Status. Each of the entities included within the definition
of CIBA is a corporation duly organized, validly existing and in good
standing under the laws of the jurisdiction in which it is organized
and has all requisite corporate power and authority to carry on its
business as it is now being conducted, and to execute, deliver and
perform this Agreement and to consummate the transactions contemplated
hereby.
4.2. Title to Assets. CIBA and/or its patent, Novartis AG believes in good
faith that it has good and marketable title to all of the Assets
subject to the aforementioned licenses. To CIBA's knowledge there are
no outstanding agreements, liens or encumbrances, except for the
aforementioned license, which is inconsistent with the provisions of
this Agreement to which CIBA is a party.
4.3. Compliance with Law. CIBA has not received any notice of any material
violation of any applicable law, regulation or other requirement of
any governmental body, agency or authority or court relating to the
Assets which remains unresolved as of the Closing Date.
4.4. Disclaimer and Limitation of Liability. EXCEPT AS SET FORTH IN THIS
ARTICLE 5, (i) CIBA MAKES NO REPRESENTATION OR WARRANTY, EXPRESS OR
IMPLIED, RELATING TO THE ASSETS, INCLUDING WITHOUT LIMITATION, ANY
REPRESENTATION OR WARRANTY AS TO VALUE, MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE OR FOR ORDINARY PURPOSES, VALIDITY, TITLE OR
NON-INFRINGEMENT. OR ANY OTHER MATTER; AND (ii) THE ASSETS ARE
CONVEYED TO IMPLANTABLE VISION ON AN "AS IS, WHERE IS" BASIS AND T
IMPLANTABLE VISION SHALL RELY ON ITS OWN EXAMINATION THEREOF. IN NO
EVENT SHALL CIBA BE LIABLE FOR ANY MATTER WHATSOEVER RELATING TO THE
USE OF THE ASSETS FOLLOWING THE EFFECTIVE DATE BY IMPLANTABLE VISION,
ITS AFFILIATES OR ANY THIRD PARTY. IN NO EVENT SHALL CIBA BE LIABLE
FOR INDIRECT, SPECIAL, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES
OR LOST PROFITS.
5. REPRESENTATIONS AND WARRANTIES OF IMPLANTABLE VISION
IMPLANTABLE VISION hereby represents and warrants to CIBA as follows:
5.1 Corporate Status. IMPLANTABLE VISION is a corporation duly organized,
validly existing and in good standing under the laws of the
jurisdiction in which it is organized and has all requisite corporate
power and authority to carry on its business as it is now being
conducted, and to execute, deliver and perform this Agreement and to
consummate the transactions contemplated hereby.
5.2 Consents and Approvals. The execution, delivery and performance of
this Agreement and the consummation of the transactions contemplated
hereby have been duly and validly authorized by all necessary
corporate action on the part of IMPLANTABLE VISION. Neither the
execution and delivery by IMPLANTABLE VISION of this Agreement or the
Transaction Documents, nor the performance thereof will require any
filing, consent or approval or constitute a material default or breach
under (a) any law or regulation to which IMPLANTABLE VISION is
subject, (b) the charter documents of IMPLANTABLE VISION, (c) any
other agreement to which the IMPLANTABLE VISION may be a party. This
Agreement shall be the sole constitutor of the legal, valid and
binding obligation of IMPLANTABLE VISION and shall be enforceable in
accordance with its terms.
6. CLOSING; CONDITIONS PRECEDENT
6.1. Closing. The closing of the transactions contemplated by this
Agreement shall take place by signing of the Agreement by executive
representatives of both parties, and shall become effective as of the
Closing Date.
6.2. Conditions to the Obligations of IMPLANTABLE VISION. The obligations
of IMPLANTABLE VISION to purchase the Assets and assume the Assumed
Liabilities, and to consummate the other transactions contemplated by
this Agreement, are subject to the satisfaction on and as of the
Closing Date of each of the following conditions:
6.2.1. Representations and Warranties. The representations and
warranties of CIBA set forth in this Agreement shall be true and
correct as of the Closing Date, except for breaches of
representations and warranties as to matters that, individually
or in the aggregate, would not have a material adverse effect on
the Business.
6.2.2. Performance of Obligations of CIBA. CIBA shall have performed
or complied in all material respects with all obligations,
conditions and covenants required to be performed by it under
this Agreement at or prior to the Closing Date.
6.2.3. Deliveries. CIBA shall have executed and delivered to
IMPLANTABLE VISION, the FDA Study in the form of Exhibit A
hereto, each Patent Assignment attached hereto as Exhibit B, and
each Trademark Assignment attached hereto as Exhibit C.
6.3. Conditions to the Obligations of CIBA. The obligations of CIBA to
sell, assign, convey the Assets are subject to the satisfaction on and
as of the Closing Date of each of the following conditions:
6.3.1. Representations and Warranties. The representations and
warranties of IMPLANTABLE VISION set forth in this Agreement
shall be true and correct in all material respects as of the
Closing Date, except for breaches of representations and
warranties as to matters that individually or in the aggregate
would not materially interfere with IMPLANTABLE VISION's
performance of its obligations hereunder.
6.3.2. Performance of Obligations of IMPLANTABLE VISION. IMPLANTABLE
VISION shall have performed in all material respects all
obligations required to be performed by it under this Agreement
at or prior to the Closing Date.
7. INDEMNIFICATION
7.1. By CIBA. From and after the Closing Date, to the extent provided in
this Article 8, CIBA shall indemnify and hold harmless IMPLANTABLE
VISION and each Affiliate and agent of IMPLANTABLE VISION (the "CIBA
Indemnified Parties") from and against any (i) losses, damages,
judgments, awards, penalties and settlements; (ii) demands, claims,
suits, actions, causes of action, proceedings and assessments; and
(iii) costs and expenses, penalties, court costs and reasonable fees
and expenses of attorneys and expert witnesses incurred by a CIBA
Indemnified Party resulting from, arising out of or relating to any
events prior to the Effective Date of this Agreement.
7.2. Limitation of CIBA's Liability. Notwithstanding any provision of this
Agreement to the contrary, CIBA's obligations under Section 8.1 shall
be limited as follows:
7.2.1. All claims for indemnification by a CIBA Indemnified Party must
be asserted no later than two (2) years after the Closing Date;
7.2.2. No claim shall be made against CIBA unless and until the
aggregate amount of such claims exceeds fifty thousand dollars
($50,000), in which event a CIBA Indemnified Party may claim
indemnification for the amount in excess of fifty thousand
dollars ($50,000), and may offset indemnity amounts against
royalties due in the future;
7.2.3. Any amounts payable by CIBA shall be reduced by the amount of
any insurance proceeds, third party reimbursement or other
compensation received by a CIBA Indemnified Party with respect to
the matter for which indemnification is claimed but not from
insurance policies of which Implantable is the primary insured;
7.2.4. The maximum aggregate liability of CIBA to IMPLANTABLE VISION
shall be limited to the aggregate cash consideration and
royalties paid by IMPLANTABLE VISION to CIBA under Article 3.
7.3. By IMPLANTABLE VISION. From and after the Closing Date, to the extent
provided in this Article 8, IMPLANTABLE VISION shall indemnify and
hold harmless CIBA and each Affiliate and agent of CIBA (the
"IMPLANTABLE VISION Indemnified Parties") from and against any (i)
losses, damages, judgments, awards, penalties and settlements; (ii)
demands, claims, suits, actions, causes of action, proceedings and
assessments; and (iii) costs and expenses, penalties, court costs and
reasonable fees and expenses of attorneys and expert witnesses
incurred by IMPLANTABLE VISION resulting from events arising on or
after the Effective Date of this Agreement, but not for any liability
related to implantations, or testing arising prior to the effective
date hereof.
7.4. Procedure for Claims. In the event that any party (the "Indemnified
Party") receives notice of, or becomes aware of, a claim for which the
Indemnified Party intends to seek indemnity hereunder, the Indemnified
Party shall promptly provide the other party (the "Indemnifying
Party") with notice of such claim. The Indemnifying Party shall have
the right, at its option and its own expense, to be represented by
counsel of its own choice and to defend against, negotiate, settle or
otherwise deal with any such claim, provided the Indemnifying Party
shall not enter into any settlement or compromise of any such claim
which could lead to liability or create any financial or other
obligation on the part of the Indemnified Party without the
Indemnified Party's prior written consent. The Indemnified Party may
participate in the defense of any claim with counsel of its own choice
and at its own expense. The parties agree to cooperate fully with each
other in connection with the defense, negotiation or settlement of any
such claim. In the event that the Indemnifying Party does not
undertake the defense, compromise or settlement of a claim, the
Indemnified Party shall have the right to control the defense or
settlement of such Claim with counsel of its choosing provided,
however, that the Indemnified Party shall not settle or compromise any
such claim without the Indemnifying Party's prior written consent,
which consent shall not be unreasonably withheld.
8. MISCELLANEOUS
8.1. Counterparts. This Agreement may be executed in one or more
counterparts, all of which shall be considered one and the same
agreement, and shall become effective when one or more counterparts
have been signed by each of the Parties and delivered to the other
Party.
8.2. Entire Agreement. This Agreement and the exhibits hereto contain the
entire agreement between the parties with respect to the subject
matter hereof and supersede all previous agreements, negotiations,
discussions, writings, understandings, commitments and conversations
with respect to such subject matter.
8.3. Amendments and Waivers. No provisions of this Agreement shall be
deemed waived, amended, supplemented or modified by any party, unless
such waiver, amendment, supplement or modification is in writing and
signed by the authorized representative of the party against whom it
is sought to be enforced.
8.4. Governing Law. This Agreement shall be governed by and construed and
interpreted in accordance with the laws of the State of Georgia,
irrespective of its choice of laws principles, as to all matters,
including matters of validity, construction, effect, enforceability,
performance and remedies.
8.5. Assignability. This Agreement shall be binding upon and inure to the
benefit of the Parties hereto and thereto, respectively, and their
respective successors and assigns. Without limitation of the
foregoing, the obligations to pay royalties under Article 3 shall be
binding on any successor in interest, whether by acquisition, merger
or otherwise, to the IMPLANTABLE VISION. No party may assign its
respective rights or delegate its respective obligations under this
Agreement without the express prior written consent of the other
party, provided that CIBA may assign all or part of the right to
receive ongoing payments under this Agreement subsequent to the
Closing without the consent of IMPLANTABLE VISION.
8.6. Confidentiality : The terms of the Secrecy Agreement between the
parties dated October 31, 2005 shall apply to all information
exchanged between the parties in the course of negotiating this
Agreement.
8.7. Third Party Beneficiaries. There are no third party beneficiaries of
this Agreement. The provisions of this Agreement are solely for the
benefit of the parties and are not intended to confer any rights or
remedies to any person which is not a party to this Agreement.
8.8. Notices. All notices and other communications hereunder shall be in
writing and shall be deemed duly given (a) on the date of delivery if
delivered personally, (b) on the third business day following the date
of dispatch if delivered by an internationally recognized express
courier service. All notices hereunder shall be addressed as follows:
If to IMPLANTABLE VISION, to:
If to CIBA, to:
CIBA Vision Corporation
Attn: General Counsel
00000 Xxxxx Xxxxx Xxxxxxx
Xxxxxx, Xxxxxxx, 00000
Attention: General Counsel
Any party may, by notice to the other party given in the form
specified in this Section 9.8, change the address to which such
notices are to be given.
8.9. Severability. If any provision of this Agreement is determined by a
court of competent jurisdiction to be invalid, void or unenforceable,
the remaining provisions hereof shall remain in full force and effect
and shall in no way be affected, impaired or invalidated thereby, so
long as the economic or legal substance of the transactions
contemplated hereby is not affected in any manner adverse to any party
and the parties shall negotiate in good faith in an effort to agree
upon a suitable and equitable means to effect the original intent of
the parties.
8.10.Force Majeure. No Party shall be deemed in default of this Agreement
to the extent that any delay or failure in the performance of its
obligations under this Agreement results from any cause beyond its
reasonable control and without its fault or negligence, such as acts
of God, acts of civil or military authority, acts of terrorism,
embargoes, epidemics, war, riots, insurrections, fires, explosions,
earthquakes, floods, unusually severe weather conditions, labor
problems or unavailability of parts, or, in the case of computer
systems, any failure in electrical or air conditioning equipment. In
the event of any such excused delay, the time for performance shall be
extended for a period equal to the time lost by reason of the delay.
8.11.Headings. The article, section and paragraph headings contained in
this Agreement are for reference purposes only and shall not affect in
any way the meaning or interpretation of this Agreement.
8.12.Schedules and Exhibits. All Schedules and Exhibits referenced in this
Agreement and attached hereto are incorporated herein by reference and
shall be considered for all purposes as part of this Agreement.
8.13.Waivers of Default. Waiver by either Party of any default by the
other Party of any provision of this Agreement shall not be deemed a
waiver by the waiving Party of any subsequent or other default, nor
shall it prejudice the rights of the other Party.
8.14.Public Announcements. Neither party shall issue any press release or
other public announcement concerning the transactions contemplated by
this agreement without the prior written consent of both the CIBA and
IMPLANTABLE VISION, which consent shall not be unreasonably withheld.
CIBA consents to allow SEC filings as required by law to be made on
Form 8-K and as necessary in other SEC filings.
IN WITNESS WHEREOF, the Parties, intending to be bound hereby, have
executed this Agreement as of the Closing Date.
SELLER: BUYER:
CIBA VISION IMPLANTABLE VISION
/s/Xxxxxx Xxxxxxx
By:_______________________ By: ______________________________
Xxxxxx Xxxxxxx
Name:_____________________ Name:_____________________________
President
Title: ___________________ Title: ______________________________
Date:_____________________ Date: ______________________________
CIBA VISION
By:_______________________
Name:_____________________
Title:____________________
Date:_____________________
