EXHIBIT 10.28
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SOFTWARE DEVELOPMENT AND LICENSE AGREEMENT
THIS AGREEMENT, made effective as of the 10 day of February, 1995,
(hereafter "Effective Date" by and between Xxxxxxx Instrument Company, a
corporation incorporated under the laws of the State of Washington of the United
States of America, having its headquarters offices at 0000 Xxxxx Xxxxx Xxxxxxx,
Xxxxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as "Xxxxxxx Headquarters")
and any wholly owned divisions or subsidiaries thereof (hereinafter referred to
as "Xxxxxxx"), American Home Products Corporation (the parent company of
Xxxxxxx) a corporation incorporated under the laws of the State of Delaware,
having offices at 0 Xxxxxxx Xxxxx, Xxxxxxx, Xxx Xxxxxx 00000 (hereinafter
referred to as "AHPC") and Hewlett-Packard Company, a corporation incorporated
under the laws of the State of California, having offices at 0000 Xxxxx Xxxxx
Xxxxxx, XxXxxxxxxxx, Xxxxxx 00000 (hereinafter referred to as "HP").
WITNESSETH
WHEREAS, HP designs and manufactures electromedical equipment including
electrocardiographs that incorporate ECG 12-lead analysis software and ECG
12-lead transmission software;
WHEREAS, Xxxxxxx designs and manufactures electromedical equipment
including ECG stress test systems and other instruments and desires to
incorporate ECG 12-lead analysis software and ECG 12-lead transmission software
into its instruments;
WHEREAS, Xxxxxxx desires to commence a product design program that will
lead to the incorporation of a Ported Analysis Program for use on Xxxxxxx
Instrumentation as set forth below;
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WHEREAS, HP is the owner of the Analysis Program that performs 12-lead ECG
measurement and interpretation and that has received FDA approval and is
currently licensed by HP for use in various FDA approved products of HP and that
is periodically updated and improved by HP and is currently actively marketed by
HP on a broad scale;
WHEREAS, HP is willing to grant to Xxxxxxx and Affiliate Companies rights
and licenses to HP Licensed Works on the terms and conditions contained herein;
and
WHEREAS, Xxxxxxx and Affiliate Companies are willing to grant to HP rights
and licenses to Xxxxxxx Licensed Works on the terms and conditions contained
herein;
NOW, THEREFORE, the parties further agree as follows:
SECTION 1: DEFINITIONS
As used in this Agreement, the following terms shall be deemed to have the
following meanings:
1(A) "Affiliate Companies," singular or plural, shall mean any parent or
subsidiary of American Home Products Corporation (AHPC) or any subsidiary
or division of any division or subsidiary of AHPC.
1(B) "Analysis Program" shall mean the comment-removed Source Code (written in
the "C" programming language) and Object Code which is otherwise
equivalent to the following HP software packages used in the most current
version and release of the HP PageWriter XLi and 200i products:
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- HP ECG Measurement Program, Release 7
- HP Adult ECG Criteria Package, Release 08
- HP Pediatric ECG Criteria Package, Release P4
1(C) "Confidentiality Period" shall extend for five (5) years beyond the
termination of this Agreement, except that the Confidentiality Period for
the Source Code of the Analysis Program, the Test Bed, and the Source Code
of the Ported Analysis Program shall be fifty (50) years from the date of
execution of this Agreement, and further provided that the Confidentiality
Period for the Source Code of each Enhanced Analysis Program and the
Source Code of each corresponding Ported Enhanced Analysis Program shall
be fifty (50) years from the date each such Enhanced Analysis Program is
made available under Section 13(A) of this Agreement.
1(D) "Development Documentation" shall mean any written documentation in hard
copy or electronic form that contains interface, data format or other
development information about the Analysis Program, the Test Bed, or any
Enhanced Analysis Program provided to Xxxxxxx by HP.
1(E) "DT Documents" shall mean the following most current releases of the ECG
data transfer documents:
"Hewlett-Packard PageWriter XLi Disk Storage Format Overview"
Revision A.01.01 dated March 15,1993
"HP Diagnostic Cardiology Digital Communications Overview"
Revision 3.0 dated September 25,1985
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1(F) "DT Software" shall mean any data transfer software developed by Xxxxxxx
for use with the Licensed Products using the DT Documents.
1(G) "End Use" shall mean a customer, researcher, clinician or other health
care worker that will use Xxxxxxx Instrumentation.
1(H) "Enhanced Analysis Program" shall mean any comment-removed revision of the
Analysis Program that incorporates an Enhancement which is otherwise
equivalent to the Enhancement provided by HP to users of HP
Instrumentation.
1(I) "Enhancement" shall mean any improvement in the features, function or
operation of the Analysis Program that HP offers for sale, lease, or
license to end users of HP Instrumentation at an average invoice price
over the first thirty (30) days of the sale of the Enhancement by HP of
more than one hundred dollars ($100.00) per unit of the revised Analysis
Program that incorporates each such improvement.
1(J) "Governmental Approval" shall mean the approval of any governmental agency
which has the authority to substantially restrict the sale, lease or other
transfer of Xxxxxxx Instrumentation to End Users unless the approval from
such agency is received.
1(K) "HP Confidential Information" shall mean the Analysis Program or any
portion thereof, the DT Documents, the Test Bed, the Development
Documentation, the Physician's Guide, any Enhanced Analysis Program or any
portion thereof; the HP evaluations of Quinton's validation test results
of the Ported Analysis Program or Ported Enhanced Analysis Program; this
Agreement; all tangible information related to the performance of this
Agreement and identified as HP Confidential; all
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intangible information (e.g. orally disclosed information) related to the
performance of this Agreement, treated as confidential at the time of
disclosure and designated as HP Confidential in tangible form within
thirty (30) days of disclosure, detailing the HP Confidential Information.
1(L) "HP Instrumentation" shall mean any present or future data acquisition,
analysis or other patient information related device or system
manufactured by or for HP or leased, licensed, sold and/or otherwise
transferred by HP to a third party and which includes the Analysis Program
and/or the Enhanced Analysis Program operational therein.
1(M) "HP Licensed Works" shall mean the Analysis Program, DT Documents, Test
Bed, Development Documentation, Physician's Guide, and each Enhanced
Analysis Program accepted under Section 13(A) below.
1(N) "Licensed Product" shall mean any Xxxxxxx Instrumentation having the
Ported Analysis Program or any Ported Enhanced Analysis Program
operational therewith for use by an End User.
1(O) "Object Code" shall mean software in object or other non-humanly
understandable format.
1(P) "Physician's Guide" shall mean the "Hewlett Packard Interpretive
Cardiograph Physician's Guide," edition 4, revision 0994 which is the most
current edition and revision of the Physician's Guide as of the Effective
Date of this Agreement, except Appendix D (relating to signal-averaged
ECG) which is excluded in its entirety and except the technical content of
Chapter 3 (relating to ECG acquisition
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by HP equipment) which Xxxxxxx shall modify to correctly reflect the
technical characteristics of the Xxxxxxx Instrumentation.
1(Q) "Ported Analysis Program" shall mean the Source Code and Object Code of
any translation of the Analysis Program that executes on Xxxxxxx
Instrumentation and which produces results equivalent to the results
produced by the Analysis Program executing on the corresponding Test Bed.
1(R) "Ported Development Documentation" shall mean any written documentation in
hard copy or electronic form which is developed by Xxxxxxx and based on
information received by Xxxxxxx from HP that contains interface, data
format or other development information about the Ported Analysis Program
or any Ported Enhanced Analysis Program.
1(S) "Ported Enhanced Analysis Program" shall mean the Source Code and Object
Code of any translation of an Enhanced Analysis Program that executes on
Xxxxxxx Instrumentation and which produces results equivalent to the
results produced by the corresponding Enhanced Analysis Program executing
on the corresponding Test Bed.
1(T) "Ported Physician's Guide" shall mean any translation and/or modification
of the Physician's Guide developed by Xxxxxxx for use with Licensed
Products.
1(U) "Xxxxxxx Confidential Information" shall mean the Ported Analysis Program
or any portion thereof, the DT Software, the Ported Development
Documentation, the Ported Physician's Guide, the Ported Enhanced Analysis
Program or any portion
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thereof, the validation test results of the Ported Analysis Program or
Ported Enhanced Analysis Program; this Agreement; all tangible information
related to the performance of this Agreement and identified as Xxxxxxx
Confidential; all intangible information (e.g. orally disclosed
information) related to the performance of this Agreement, treated as
confidential at the time of disclosure and designated as Xxxxxxx
Confidential in tangible form within thirty (30) days of disclosure,
detailing the Xxxxxxx Confidential Information.
1(V) "Xxxxxxx Instrumentation" shall mean any present or future data
acquisition, analysis or other patient information related device or
system manufactured by or for Xxxxxxx and/or Affiliate Companies, or
leased, licensed, sold, and/or otherwise transferred by Xxxxxxx or
Affiliate Companies to a third party, provided all such devices are marked
with the Xxxxxxx Instrument Company logo or Xxxxxxx Instrument Company
name. Xxxxxxx Instrumentation shall exclude the Q-Cath cardiac
catheterization system currently marketed by Xxxxxxx, or similar cardiac
catheterization products.
1(W) "Xxxxxxx Licensed Works" shall mean the Ported Analysis Program, DT
Software, Ported Development Documentation, Ported Physician's Guide, and
each Ported Enhanced Analysis Program.
1(X) "Source Code" shall mean software in source or other humanly
understandable format.
1(Y) "Test Bed" shall mean all Object Code versions of the HP software and HP
ECG waveforms, as modified by HP from time to time, used to test the
Analysis Program and Enhanced Analysis Programs.
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1(Z) "Test Bed Equipment" shall include a PC and related software, a PageWriter
XLi, and other equipment necessary to run the Test Bed.
SECTION 2: HP OBLIGATIONS
2(A) HP shall provide Xxxxxxx, within sixty (60) days of the Effective Date of
this Agreement, the Evaluation Package as set forth in Exhibit A which is
attached hereto.
2(B) HP shall provide Xxxxxxx, within forty-five (45) days of the Acceptance
Date as set forth in Section 3(D) of this Agreement, the Test Bed that
corresponds to the most current version and revision of the Analysis
Program for Quinton's use in developing and validating the Ported Analysis
Program, and HP shall promptly provide Xxxxxxx any subsequent updates or
modifications thereof, provided that said updates or modifications relate
to the version and revision of the Analysis Program (or Enhanced Analysis
Program) then in use by Xxxxxxx.
2(C) HP shall provide Xxxxxxx, within forty-five (45) days of the Acceptance
Date of this Agreement, the most current version and revision of the
Source Code of the Analysis Program for Quinton's use in developing the
Ported Analysis Program, and HP shall promptly provide Xxxxxxx any
subsequent updates or modifications thereof as governed by Section 13
hereof.
2(D) HP shall provide Xxxxxxx within forty-five (45) days of the Acceptance
Date of this Agreement with a copy of the most current version and
revision of the DT
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Documents for Quinton's use in developing the DT Software, and HP shall
promptly provide Xxxxxxx any subsequent updates or modifications thereof.
2(E) HP shall provide Xxxxxxx within forty-five (45) days of the Acceptance
Date of this Agreement with a copy of the Development Documentation that
corresponds to the most current version and revision of the Analysis
Program for Quinton's use in developing the Ported Analysis Program, and
HP shall promptly provide Xxxxxxx any subsequent updates or modifications
thereof, provided that said updates or modifications relate to the version
and revision of the Analysis Program (or Enhanced Analysis Program) then
in use by Xxxxxxx.
2(F) HP shall provide Xxxxxxx within forty-five (45) days of the Acceptance
Date of this Agreement with a copy of the Physician's Guide that
corresponds to the most current version and revision of the Analysis
Program for Quinton's use in developing the Ported Physician's Guide, and
HP shall promptly provide Xxxxxxx any subsequent updates or modifications
thereof, provided that said updates or modifications relate to the version
and revision of the Analysis Program (or Enhanced Analysis Program) then
in use by Xxxxxxx.
2(G) HP shall review and provide written evaluations of Quinton's validation
test results of the Ported Analysis Program prior to the submission of
such test results to the U.S. Food and Drug Administration (hereinafter
"FDA") and prior to the first commercial release of each version of
Licensed Product. The rights in such test results shall be owned solely by
Xxxxxxx, and such evaluations by HP shall be completed within sixty (60)
days after the receipt by HP of such test results from Xxxxxxx. The rights
in such evaluations by HP shall be owned solely by HP and Xxxxxxx shall
have the right to use such evaluations for internal use only unless
otherwise agreed to in writing by HP. The decision to submit the test
results to the
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FDA and/or any other agency for Governmental Approval to market each
version of Licensed Product shall be at the sole discretion of Xxxxxxx.
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2(H) HP shall provide Xxxxxxx the FDA "K-number" of the HP PageWriter 200i for
Quinton's use in the preparation of its FDA submittal of the Licensed
Product. HP shall provide assistance to Xxxxxxx for Governmental Approval
of the Ported Analysis Program and the Ported Enhanced Analysis Program by
promptly assisting Xxxxxxx to respond to the FDA's or other governmental
agencies' questions or inquiries during the approval process relating
specifically to the development, operation and/or maintenance of the
Analysis Program or an accepted Enhanced Analysis Program, but not
relating to the development, operation and/or maintenance of the Ported
Analysis Program, the Ported Enhanced Analysis Program or the Xxxxxxx
Instrumentation.
SECTION 3: XXXXXXX OBLIGATIONS
3(A) As consideration for the right to exercise the licenses granted herein,
Xxxxxxx shall pay HP five hundred thousand dollars ($500,000.00) according
to the following payment schedule:
(i) Two hundred thousand dollars ($200,000.00) within thirty (30) days
after the Effective Date of this Agreement.
(ii) One hundred thousand dollars ($100,000.00) within thirty (30) days
after the first, second, and third anniversary dates of the
Effective Date of this Agreement.
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3(B) Xxxxxxx shall develop the Ported Analysis Program from the Source Code of
the Analysis Program and develop the Ported Enhanced Analysis Program from
the Source Code of each accepted Enhanced Analysis Program, and shall
validate that the Ported Analysis Program and Ported Enhanced Analysis
Programs produce equivalent results when compared with the results of the
corresponding Analysis Program or Enhanced Analysis Program executing on
the corresponding Test Bed.
3(C) Xxxxxxx shall perform all testing of the Ported Analysis Program and
Ported Enhanced Analysis Program as incorporated in Xxxxxxx
Instrumentation that Xxxxxxx xxxxx necessary, in Quinton's sole
discretion, for the Governmental Approval and commercialization of
Licensed Product.
3(D) Within ninety (90) days after the receipt of the Evaluation Package, as
set forth above in Section 2 and identified in Exhibit A, Xxxxxxx shall
complete an evaluation of the development time and expenses necessary to
develop the Ported Analysis Program for Xxxxxxx Instrumentation. In the
event that Xxxxxxx, at its sole discretion, determines to proceed with the
present project, Xxxxxxx shall notify HP in writing of such decision
within ten (10) days after completion of the evaluation and the date of
receipt of the written notice shall be the Acceptance Date for the
purposes of Section 2. In the event that Xxxxxxx, at its sole discretion,
determines that the project is not advisable, based on the development
time, expenses or other reasons, Xxxxxxx shall notify HP in writing of
such decision within ten (10) days after the completion of the evaluation.
HP shall then refund payments made by Xxxxxxx pursuant to Section 3(A)
hereof within thirty (30) days of the receipt of such notice, and this
Agreement shall immediately terminate. As
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consideration for the services provided and expenses incurred by HP in
support of said Xxxxxxx evaluation, HP shall be entitled to withhold
monies from such refund calculated at the rate of thirty thousand dollars
($30,000.00) per calendar month (or portion thereof) from the date of
receipt by Xxxxxxx of the Evaluation Package until the date of receipt by
HP of said notice of Quinton's decision not to proceed with the project.
Within thirty (30) days of the date of said notice of Quinton's decision
not to proceed with the project, Xxxxxxx shall return to HP all materials
and portions thereof, and all copies of materials and portions thereof,
that HP has provided to Xxxxxxx under this Agreement and shall destroy all
materials that Xxxxxxx has generated in conducting its evaluation except
for one copy of all said HP and Xxxxxxx materials which is to be retained
in the legal department to serve solely as a record of Quinton's
obligations under this Agreement. Not withstanding the above, Xxxxxxx will
return the Test Bed Equipment to HP.
3(E) In the event Xxxxxxx decides to withdraw all Licensed Products from the
market, Xxxxxxx shall promptly notify HP of such decision and this
Agreement shall terminate under Section 12(B)(ii).
SECTION 4: OWNERSHIP AND LICENSE
4(A) The Analysis Program shall be owned by HP. Contingent upon no payments due
hereunder being in arrears from Xxxxxxx and Affiliate Companies, HP hereby
grants and Xxxxxxx accepts a nonexclusive, royalty-bearing, revocable upon
termination, worldwide limited license to internally use, copy, and
translate the Analysis Program at Xxxxxxx Headquarters to make the Ported
Analysis Program for use with Xxxxxxx Instrumentation. The right to use,
copy, and translate granted herein is limited solely to what is necessary
for the Ported Analysis Program to
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execute with the Xxxxxxx Instrumentation, and to produce equivalent
results when compared with the results of the Analysis Program executing
on the corresponding Test Bed. Xxxxxxx may not otherwise modify the
Analysis Program. Xxxxxxx may not externally distribute the Analysis
Program or any portion thereof. Xxxxxxx may not use, copy, or translate
the Analysis Program for any purpose other than the limited purpose stated
herein. All other rights are expressly reserved by HP, including the right
to grant licenses to others. As used in this Section 4(A), "Xxxxxxx" shall
not include any subsidiary or division of Xxxxxxx Instrument Company.
4(B) The Ported Analysis Program shall be owned by Xxxxxxx and Affiliate
Companies, subject to HP's underlying rights in the Analysis Program.
Xxxxxxx and Affiliate Companies hereby grant and HP accepts a
nonexclusive, royalty-free, revocable upon termination, worldwide limited
license to internally use, copy, and modify the Ported Analysis Program
for the purpose of providing support for Xxxxxxx and Affiliate Companies
which is consistent with the present Agreement and Xxxxxxx acknowledges
that HP may use the ideas, concepts, know-how and techniques learned by HP
during their support of Xxxxxxx and Affiliate Companies and the ideas,
concepts, know-how and techniques learned by HP may be nonexclusively and
irrevocably used by HP during the development of a separate and
independent ported Analysis Program. Xxxxxxx and Affiliate Companies agree
not to externally distribute the Source Code of the Ported Analysis
Program or any portion thereof. Xxxxxxx and Affiliate Companies further
agree not to externally distribute the Object Code of the Ported Analysis
Program except to End Users for use with Licensed Products and to
subcontractors and/or consultants for use in the development of Licensed
Products. All other rights are expressly reserved by Xxxxxxx and Affiliate
Companies, including but not limited to the right to have
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Object Code of the Ported Analysis Program reproduced by others for use
with Licensed Products.
4(C) The DT Documents shall be owned by HP. Contingent upon no payments due
hereunder being in arrears from Xxxxxxx and Affiliate Companies, HP hereby
grants and Xxxxxxx accepts a nonexclusive, royalty-free, revocable upon
termination, worldwide limited license to use, copy, and modify the DT
Documents to make the DT Software for use with Licensed Products. Xxxxxxx
may not externally distribute the DT Documents or any portion thereof
without the express written permission of HP except for use by
subcontractors and/or consultants who agree in advance and in writing to
abide by the HP confidentiality agreement attached hereto as Exhibit B.
(Xxxxxxx shall provide to HP copies of all such executed confidentiality
agreements.) Xxxxxxx may not modify or use the DT Documents for any
purpose other than the limited purpose stated herein. All other rights are
expressly reserved by HP, including the right to grant licenses to others.
4(D) The DT Software shall be owned by Xxxxxxx and Affiliate Companies, subject
to HP's underlying rights in the DT Documents. Xxxxxxx and Affiliate
Companies agree not to externally distribute the Source Code of the DT
Software or any portion thereof except for use by subcontractors and/or
consultants who agree in advance and in writing to abide by the
confidentiality provisions of Section 8 hereof. Xxxxxxx and Affiliate
Companies further agree not to externally distribute the Object Code of
the DT Software except to End Users for use with Licensed Products and to
subcontractors and/or consultants for use in the development of Licensed
Products. All other rights are expressly reserved by Xxxxxxx and Affiliate
Companies, including but not limited to the right to have Object Code of
the DT Software reproduced by others for use with Licensed Products.
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4(E) The Test Bed shall be owned by HP. Contingent upon no payments due
hereunder being in arrears from Xxxxxxx and Affiliate Companies, HP hereby
grants and Xxxxxxx accepts a nonexclusive, royalty-free, revocable upon
termination, worldwide limited license to internally use and copy the Test
Bed at Xxxxxxx Headquarters to validate and support the Ported Analysis
Program and any accepted Ported Enhanced Analysis Program for use with
Xxxxxxx Instrumentation. Xxxxxxx may not modify or externally distribute
the Test Bed or any portion thereof. Xxxxxxx may not use or copy the Test
Bed for any purpose other than the limited purpose stated herein. All
other rights are expressly reserved by HP, including the right to grant
licenses to others.
4(F) Development Documentation shall be owned by HP. Contingent upon no
payments due hereunder being in arrears from Xxxxxxx and Affiliate
Companies, HP hereby grants and Xxxxxxx accepts a nonexclusive,
royalty-free, revocable upon termination, worldwide limited license to
internally use, copy, and modify the Development Documentation at Xxxxxxx
Headquarters to make the Ported Development Documentation and to support
the development of Xxxxxxx Instrumentation used with the Ported Analysis
Program or any accepted Ported Enhanced Analysis Program. Xxxxxxx may not
externally distribute the Development Documentation or any portion
thereof. Xxxxxxx may not use, copy, or modify the Development
Documentation for any purpose other than the limited purpose stated
herein. All other rights are expressly reserved by HP, including the right
to grant licenses to others.
4(G) The Ported Development Documentation shall be owned by Xxxxxxx and
Affiliate Companies, subject to HP's underlying rights in the Development
Documentation.
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Xxxxxxx and Affiliate Companies hereby grant and HP accepts a
nonexclusive, royalty-free, revocable upon termination, worldwide limited
license to internally use, copy, and modify the Ported Development
Documentation for the purpose of providing support for Xxxxxxx and
Affiliate Companies which is consistent with the present Agreement and
Xxxxxxx acknowledges that HP may use the ideas, concepts, know-how and
techniques learned by HP during their support of Xxxxxxx and Affiliate
Companies and the ideas, concepts, know-how and techniques learned by HP
may be nonexclusively and irrevocably used by HP during the development of
a separate and independent ported Analysis Program and/or separate and
independent ported Enhanced Analysis Program. Xxxxxxx and Affiliate
Companies agree not to externally distribute the Ported Development
Documentation or any portion thereof. All other rights are expressly
reserved by Xxxxxxx and Affiliate Companies.
4(H) The Physician's Guide shall be owned by HP. Contingent upon no payments
due hereunder being in arrears from Xxxxxxx and Affiliate Companies, HP
hereby grants and Xxxxxxx and Affiliate Companies accept a nonexclusive,
royalty-free, revocable upon termination, worldwide limited license to
internally, use, copy, and modify the Physician's Guide to make the Ported
Physician's Guide for use with Licensed Products. Xxxxxxx and Affiliate
Companies may not use, copy, modify, or externally distribute the
Physician's Guide for any purpose other than the limited purpose stated
herein except for use by subcontractors and/or consultants who agree in
advance and in writing to abide by the confidentiality provisions of
Section 8 hereof. All other rights are expressly reserved by HP, including
the right to grant licenses to others.
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4(1) The Ported Physician's Guide shall be owned by Xxxxxxx and Affiliate
Companies, subject to HP's underlying rights in the Physician's Guide.
Xxxxxxx and Affiliate Companies agree not to externally distribute the
Ported Physician's Guide except to End Users or prospective buyers for use
with Licensed Products and to subcontractors and/or consultants for use in
the development of Licensed Products. All other rights are expressly
reserved by Xxxxxxx and Affiliate Companies, including but not limited to
the right to have the Ported Physician's Guide reproduced by others for
use with Licensed Products.
4(J) Each Enhanced Analysis Program shall be owned by HP. For each Enhanced
Analysis Program that is accepted by Xxxxxxx under Section 13(A) below and
contingent upon no payments due hereunder being in arrears from Xxxxxxx
and Affiliate Companies, HP hereby grants and Xxxxxxx accepts a
nonexclusive, royalty-bearing, revocable upon termination, worldwide
limited license to internally use, copy, and translate each Enhanced
Analysis Program at Xxxxxxx Headquarters to make a corresponding Ported
Enhanced Analysis Program for use with Xxxxxxx Instrumentation. The right
to use, copy, and translate granted herein is limited solely to what is
necessary for the Ported Enhanced Analysis Program to execute with the
Xxxxxxx Instrumentation, and to produce equivalent results when compared
with the results of the corresponding Enhanced Analysis Program executing
on the corresponding Test Bed. Xxxxxxx may not otherwise modify the
Enhanced Analysis Program. Xxxxxxx may not externally distribute the
Enhanced Analysis Program or any portion thereof. Xxxxxxx may not use,
copy, or translate the Enhanced Analysis Program for any purpose other
than the limited purpose stated herein. All other rights are expressly
reserved by HP, including the right to grant licenses to others. As used
in this Section 4(J), "Xxxxxxx" shall not include any subsidiary or
division of Xxxxxxx Instrument Company.
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4(K) Each Ported Enhanced Analysis Program shall be owned by Xxxxxxx and
Affiliate Companies, subject to HP's underlying rights in the Analysis
Program and each Enhanced Analysis Program. Xxxxxxx and Affiliate
Companies hereby grant and HP accepts a nonexclusive, royalty-free,
revocable upon termination, worldwide limited license to internally use,
copy, and modify the Ported Enhanced Analysis Program for the purpose of
providing support for Xxxxxxx and Affiliate Companies which is consistent
with the present Agreement and Xxxxxxx acknowledges that HP may use the
ideas, concepts, know-how and techniques learned by HP during their
support of Xxxxxxx and Affiliate Companies and the ideas, concepts, know-
how and techniques learned by HP may be nonexclusively and irrevocably
used by HP during the development of a separate and independent ported
Enhanced Analysis Program. Xxxxxxx and Affiliate Companies agree not to
externally distribute the Source Code of the Ported Enhanced Analysis
Program or any portion thereof. Xxxxxxx and Affiliate Companies further
agree not to externally distribute the Object Code of the Ported Enhanced
Analysis Program except to End Users for use with Licensed Products and to
subcontractors and/or consultants for use in the development of Licensed
Products. All other rights are expressly reserved by Xxxxxxx and Affiliate
Companies, including but not limited to the right to have Object Code of
the Ported Enhanced Analysis Program reproduced by others for use with
Licensed Products.
4(L) Upon termination, the revocation of the licenses granted to Xxxxxxx and
Affiliate Companies above shall not affect the ability of Quinton's and/or
Affiliate Companies' End Users to continue using Licensed Products (for
which a royalty as set forth in Section 5 hereof has been paid) obtained
prior to termination, and it also shall not affect the ability of Xxxxxxx
and Affiliate Companies to continue
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providing customer support to its End Users who obtained Licensed Products
(for which a royalty as set forth in Section 5 hereof has been paid) prior
to termination.
4(M) Upon termination, the revocation of the licenses granted to HP and Xxxxxxx
and Affiliate Companies above shall not affect the ability of HP to
continue providing support to Xxxxxxx to enable Xxxxxxx and Affiliate
Companies to continue providing customer support to its End Users who
obtained Licensed Products (for which a royalty as set forth in Section 5
hereof has been paid) prior to termination.
4(N) Test Bed Equipment shall be owned by HP and loaned to Xxxxxxx without
charge for the duration of this Agreement. Xxxxxxx agrees to return the
Test Bed Equipment within thirty (30) days of termination of this
Agreement. HP agrees to maintain and update the Test Bed Equipment at HP's
expense as appropriate for the version and revision of the Analysis
Program and Enhanced Analysis Program then in use by Xxxxxxx.
SECTION 5: ROYALTIES
5(A) As consideration for the rights granted herein from HP to Xxxxxxx and
Affiliate Companies, Xxxxxxx agrees to pay HP a royalty of two hundred
seventy-five dollars ($275.00) for each unit of the Licensed Product sold,
leased, sublicensed, or otherwise transferred to a third party or an End
User. For the purposes of the payment of royalty payments, a unit shall be
deemed to be sold, leased, sublicensed, or otherwise transferred to a
third party or an End User when invoiced (including "no charge" invoices)
by Xxxxxxx or by an Affiliate Company for the account of Xxxxxxx, except
that no royalties shall be paid for demonstration,
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service, repair or replacement units. If no Ported Analysis Program or any
Ported Enhanced Analysis Program is operational in the Xxxxxxx
Instrumentation when sold, leased, sublicensed, or otherwise transferred
to the third party or End User, but is subsequently made available,
altered or otherwise modified to become operational, a royalty shall then
be payable when invoiced (including no charge" invoices) by Xxxxxxx or by
an Affiliate Company for the account of Xxxxxxx for such Licensed Product.
5(B) In the event multiple users have the capability to use a single Licensed
Product simultaneously, the royalty payment specified in this Section 5
shall be for each user having the capability to simultaneously execute the
Ported Analysis Program or any Ported Enhanced Analysis Program for use
with a single Licensed Product.
5(C) Royalties shall be paid by Xxxxxxx or by an Affiliate Company for the
account of Xxxxxxx to HP within thirty (30) days after the end of each
calendar quarter and shall be made payable to Hewlett-Packard Company and
mailed as follows:
Hewlett-Packard Company
0000 Xxxxx Xxxxx Xxxxxx
XxXxxxxxxxx, Xxxxxx 00000
Attention: Controller
5(D) In the event HP licenses the Analysis Program or any Enhanced Analysis
Program to a third party for a lower royalty than that specified in
Section 5(A), the royalty specified in Section 5(A) shall be reduced to
equal this lower royalty for all subsequent royalty payments made to HP by
Xxxxxxx or by an Affiliate Company for the account of Xxxxxxx.
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5(E) In the event that prior to the third anniversary of the Effective Date of
this Agreement, HP licenses the Analysis Program or any Enhanced Analysis
Program to a third party for a lower payment than that specified in
Section 3(A), the payment specified in Section 3(A) shall be reduced to
equal this lower payment to HP by Xxxxxxx or by an Affiliate Company for
the account of Xxxxxxx. If the total of all payments actually made by
Xxxxxxx and by Affiliate Companies for the account of Xxxxxxx to HP
pursuant to Section 3(A) is in excess of said lower payment, then such
excess payments shall be applied as prepaid royalties against future
royalties due pursuant to Section 5(A).
SECTION 6: WARRANTIES
6(A) HP represents and warrants to the best of its knowledge, as of the
Effective Date of this Agreement, that the rights granted by HP to Xxxxxxx
under this Agreement do not infringe any enforceable copyright, trade
secret, patent or any other intellectual property right of any third
party. HP further represents and warrants that HP is not aware, as of the
Effective Date of this Agreement, of any enforceable copyright, trade
secret, patent or other intellectual property right of a third party that
is infringed by HP's use of HP Licensed Works.
6(B) HP warrants that it has all rights necessary to grant the licenses granted
in Section 4 hereof and that all rights of HP which are necessary for
Xxxxxxx to incorporate the Analysis Program and Enhanced Analysis Program
into Xxxxxxx Instrumentation are granted to Xxxxxxx by the present
Agreement.
6(C) HP warrants that the Analysis Program provided hereunder is equivalent to
the corresponding software that HP is shipping in the current edition and
revision of
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the HP PageWriter XLi and 200i cardiographs as of the Effective Date of
this Agreement and that the Analysis Program is currently classified as
"Active" in accordance with the HP life cycle classification code set
forth in Section 13(E), and HP has no formal plans to reclassify the
Analysis Program as of the Effective Date of this Agreement.
6(D) HP warrants that the Analysis Program provided hereunder will, when
properly installed on the Test Bed, execute its programming instructions.
HP does not warrant that the HP Licensed Works are error free, nor that
the operation of HP software, including but not limited to the Analysis
Program, Test Bed, and any Enhanced Analysis Program, shall be
uninterrupted or error free.
6(E) Both parties warrant that they have the right to disclose any Confidential
Information transferred or disclosed to the other party hereunder.
6(F) NO OTHER WARRANTIES ARE MADE BY EITHER PARTY UNDER THIS AGREEMENT. ALL
OTHER WARRANTIES, INCLUDING THE IMPLIED WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE, ARE EXPRESSLY DISCLAIMED. IN ADDITION,
HP MAKES NO WARRANTY WITH RESPECT TO THE SUFFICIENCY FOR REGULATORY
SUBMITTALS AND APPROVALS OF ANY INFORMATION PROVIDED BY HP TO XXXXXXX.
SECTION 7: ROYALTY CALCULATION, REPORTS, RECORDS AND WITHHOLDING TAXES
7(A) Xxxxxxx agrees to keep true and accurate records adequate to establish any
royalty payable under this Agreement and to permit an independent
accounting organization chosen and compensated by HP, and reasonably
acceptable to
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Xxxxxxx (which acceptance shall not be unreasonably withheld), to audit,
on a confidential basis, said records once annually at reasonable times
upon reasonable notice, but only within a period of three (3) years after
the royalty period to which such records relate. In the event that the
results of such audit demonstrates an underpayment by Xxxxxxx and
Affiliate Companies of at least 10%, then Xxxxxxx shall reimburse HP for
the expenses of such audit. Any underpayment or overpayment shall be
included or credited with the next payment under this Agreement. Xxxxxxx
or Affiliate Companies for the account of Xxxxxxx shall provide HP royalty
reports of royalties paid at the same time payments are made in accordance
with paragraph 5(A) hereof.
7(B) All taxes, assessments and fees of any nature levied by any governmental
entity on the sale, lease, license or sublicense of, including or
utilizing the Licensed Product shall be paid by Xxxxxxx or an Affiliate
Company for its accounts. Notwithstanding the above, HP shall be
responsible for taxes based upon its net income and for withholding taxes.
If Xxxxxxx or an Affiliate Company tentatively concludes that an income or
other tax, fee or assessment may be levied on HP under this Agreement by
any governmental entity and Xxxxxxx or the Affiliate Company might be
legally required to withhold such tax from the payment of royalty from
Xxxxxxx or an Affiliate Company to HP, Xxxxxxx or the Affiliate Company
shall immediately notify HP and request instructions. In the event of a
disagreement between Xxxxxxx or an Affiliate Company and HP as to the
advisability of the payment of an income or other tax, fee, or assessment,
by Xxxxxxx or an Affiliate Company which may be levied on HP, Xxxxxxx or
the Affiliate Company may, at their discretion make such payment for the
account of HP. In any case where taxes are withheld, Xxxxxxx shall provide
HP with all
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documents relating to withheld taxes including receipts necessary to claim
the applicable credit.
SECTION 8: CONFIDENTIALITY
8(A) Until the expiration of the Confidentiality Period, Xxxxxxx and Affiliate
Companies agree to use the same degree of care, but no less than a
reasonable degree of care, to prevent the unauthorized disclosure,
publication or dissemination of HP Confidential Information as Xxxxxxx and
Affiliate Companies use to protect their own confidential information of a
like nature. Xxxxxxx and Affiliate Companies further agree to limit the
internal circulation of HP Confidential Information to those Xxxxxxx and
Affiliate Companies employees who have a need to know for purposes of
evaluating or performing this Agreement. Xxxxxxx and Affiliate Companies
further agree not to use HP Confidential Information for any purpose other
than authorized by this Agreement.
8(B) Until the expiration of the Confidentiality Period, HP agrees to use the
same degree of care, but no less than a reasonable degree of care, to
prevent the unauthorized disclosure, publication or dissemination of
Xxxxxxx Confidential Information as HP uses to protect its own
confidential information of a like nature. HP further agrees to limit the
internal circulation of Xxxxxxx Confidential Information to those HP
employees who have a need to know for purposes of evaluating or performing
this Agreement. HP further agrees not to use Xxxxxxx Confidential
Information for any purpose other than authorized by this Agreement.
8(C) This Agreement imposes no obligation upon Xxxxxxx and Affiliate Companies
with respect to confidential information that: (a) was in Quinton's or an
Affiliate
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Company's possession before receipt from HP; (b) is or becomes a matter of
public knowledge through no fault of Xxxxxxx or an Affiliate Company; (c)
is rightfully received by Xxxxxxx or an Affiliate Company from a third
party without a duty of confidentiality to HP; (d) is disclosed by HP to a
third party without a duty of confidentially on the third party; (e) is
independently developed by Xxxxxxx or an Affiliate Company, (f) is
disclosed under operation of law; or (g) is disclosed by Xxxxxxx or an
Affiliate Company with HP's prior written approval. Not withstanding the
foregoing, Xxxxxxx shall notify HP at least thirty (30) days prior to
Quinton's or an Affiliate Company's disclosure of any portion of the
Source Code of the Analysis Program or any Enhanced Analysis Program that
Xxxxxxx or an Affiliate Company believes to be covered by (a) through (e)
and (g) of this Section 8(C). Prior to any disclosure of any portion of
the Source Code of the Analysis Program or any Enhanced Analysis Program
under (f) of this Section 8(C), Xxxxxxx agrees to notify HP immediately
upon receipt by Xxxxxxx or an Affiliate Company of a notice from a
governmental entity requiring such disclosure so that HP may seek a
protective order blocking such disclosure.
8(D) This Agreement imposes no obligation upon HP with respect to confidential
information that: (a) was in HP's possession before receipt from Xxxxxxx
or an Affiliate Company; (b) is or becomes a matter of public knowledge
through no fault of HP; (c) is rightfully received by HP from a third
party without a duty of confidentiality to Xxxxxxx or an Affiliate
Company; (d) is disclosed by Xxxxxxx or an Affiliate Company to a third
party without a duty of confidentiality on the third party; (e) is
independently developed by HP; (f) is disclosed under operation of law; or
(g) is disclosed by HP with Quinton's or an Affiliate Company's prior
written approval. Not withstanding the foregoing, HP shall notify Xxxxxxx
at least thirty (30) days prior to HP's disclosure of any portion of the
Source Code of the Ported
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Analysis Program or any Ported Enhanced Analysis Program that HP believes
to be covered by (a) through (e) and (g) of this Section 8(D). Prior to
any disclosure of any portion of the Source Code of the Ported Analysis
Program or any Ported Enhanced Analysis Program under (f) of this Section
8(D), HP agrees to notify Xxxxxxx immediately upon receipt of a notice
from a governmental entity requiring such disclosure so that Xxxxxxx or an
Affiliate Company may seek a protective order blocking such disclosure.
8(E) Both parties shall adhere to all applicable laws, regulations and rules
relating to the export of technical data, and shall not export or reexport
any technical data, any products received from the other party, or the
direct product of such technical data to any proscribed country listed in
such applicable laws, regulations and rules unless properly authorized.
8(F) Xxxxxxx and Affiliate Companies agree that they will not reverse assemble,
reverse compile, or re-engineer any portion of the Object Code of the Test
Bed to obtain Source Code of the Test Bed, nor induce or in any way assist
any third party to do the same.
8(G) Upon expiration of the Confidentiality Period for any Confidential
Information of either party, any use, disclosure, publication, and
dissemination of the formerly Confidential Information is subject to any
copyright or other intellectual property right and/or licenses still in
effect on the date of expiration.
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SECTION 9: TECHNICAL SUPPORT
9(A) HP shall provide (at Quinton's, HP's, or other mutually agreeable
facilities), beginning with the Effective Date and continuing until the
date of Quinton's or an Affiliate Company's first sale of a Licensed
Product, technical consultation to Xxxxxxx or an Affiliate Company, as may
be reasonably required by Xxxxxxx or an Affiliate Company, to facilitate
Quinton's or an Affiliate Company's understanding of HP Licensed Works.
Xxxxxxx or an Affiliate Company for Quinton's account shall reimburse HP
for authorized documented travel related to the provision of services
hereunder that are approved in advance and in writing by Xxxxxxx.
Technical consultation provided hereunder in excess of a total of ten (10)
man-months shall be approved in advance and in writing by Xxxxxxx, and
Xxxxxxx or an Affiliate Company for Quinton's account shall pay HP, as
consideration for such additional consultation, monies in amounts
calculated by using HP's then current customer engineer billing rate.
9(B) HP shall provide (at Quinton's, HP's, or other mutually agreeable
facilities), beginning with the date of Quinton's acceptance of each
Enhanced Analysis Program under Section 13(A) set forth below and
continuing until the date of Quinton's or an Affiliate Company's first
sale of a Licensed Product containing the corresponding Ported Enhanced
Analysis Program, technical consultation to Xxxxxxx or an Affiliate
Company, as may be reasonably required by Xxxxxxx or an Affiliate Company,
to facilitate Quinton's or an Affiliate Company's understanding of the
Enhanced Analysis Program. Xxxxxxx or an Affiliate Company for Quinton's
account shall reimburse HP for authorized documented travel related to the
provision of services hereunder that are approved in advance and in
writing by Xxxxxxx. Technical consultation provided hereunder in excess of
a total of three
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(3) man-months shall be approved in advance and in writing by Xxxxxxx, and
Xxxxxxx or an Affiliate Company for Quinton's account shall pay HP, as
consideration for such additional consultation, monies in amounts
calculated by using HP's then current customer engineer billing rate.
9(C) Should additional technical consultation be requested of HP by Xxxxxxx or
an Affiliate Company through Xxxxxxx during times other than those set
forth in Sections 9(A) and 9(B) above, HP will use reasonable efforts to
provide such consultation, consistent with HP's other business
requirements and subject to Section 13(E) below. Xxxxxxx or an Affiliate
Company for Quinton's account shall reimburse HP for authorized documented
travel related to the provision of services hereunder that are approved in
advance and in writing by Xxxxxxx. Xxxxxxx or an Affiliate Company for
Quinton's account shall pay HP, as consideration for such additional
consultation, monies in amounts calculated by using HP's then current
customer engineer billing rate.
9(D) Xxxxxxx and Affiliate Companies shall provide all direct customer service
and direct customer support for Xxxxxxx Instrumentation and Licensed
Products.
9(E) Coordination of all technical support in Section 9 hereof shall be through
Xxxxxxx Headquarters.
SECTION 10: PUBLICATION
10(A) The parties acknowledge and agree that a joint public announcement of the
present Agreement is desirable and shall be made as soon as practical
after the Effective Date of this Agreement. The public announcement shall
be approved in
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advance by both parties to this Agreement during the evaluation period set
forth in Section 3(D) above, and shall constitute the only public
disclosure of the details of the present Agreement unless otherwise agreed
to in writing by both parties to this Agreement. The use by both parties
to this Agreement of said approved public announcement shall be
conditional upon Quinton's determination to proceed with the project and
its notification to HP of such decision as specified in Section 3(D)
above.
10(B) HP agrees to allow Xxxxxxx and Affiliate Companies to refer to the source
of the Analysis Program or Enhanced Analysis Program without further
compensation in all literature or other materials that relate or refer to
the Licensed Products, provided such reference is done in a purely factual
and not misleading manner.
10(C) Xxxxxxx and Affiliate Companies may externally distribute the Ported
Physician's Guide or any similar related literature or materials specified
in Section 10(B) to subcontractors and/or consultants for use in the
development of Licensed Products. Xxxxxxx and Affiliate Companies agree
not to otherwise externally distribute the Ported Physician's Guide or any
similar related literature or materials specified in Section 10(B) except
to End Users or prospective buyers for use with Licensed Products without
first providing a copy to HP of the information to be externally
distributed at least thirty (30) days prior to distribution and obtaining
from HP written approval for distribution, such approval by HP shall be
provided in writing within 30 days of HP's receipt thereof and may not be
unreasonably withheld by HP. During the evaluation period set forth in
Section 3(D), the parties hereto shall agree on standard approved language
for use in Xxxxxxx literature. Thereafter, all literature or related
materials which relate or refer to the Licensed Products using only the
standard approved language in the same context as
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approved shall not be subject to additional prior review by HP. Any
modifications and/or additions to the standard approved language or the
context in which it is used shall be submitted in the manner set forth
above. Upon approval of such modifications and/or additions by HP, such
modifications and/or additions shall then be treated in the same manner as
the standard approved language set forth above. Not withstanding the
foregoing, the external distribution by Xxxxxxx and Affiliate Companies of
any of the said standard approved language shall be conditional upon
Quinton's determination to proceed with the project and its notification
to HP of such decision as specified in Section 3(D) above.
10(D) Xxxxxxx and Affiliate Companies agree not to externally distribute the
performance characteristics of the Analysis Program or any Enhanced
Analysis Program without submitting the performance characteristics
thereof to HP for the review and approval of HP thirty (30) days prior to
the external distribution thereof and any such approval by HP shall be
provided in writing within thirty (30) days of HP's receipt thereof and
may not be unreasonably withheld by HP. The limitations se forth herein
shall not apply to any information which is in the public domain and no
rights in the information provided to HP are granted to HP under this
Section.
10(E) Xxxxxxx and Affiliate Companies agree not to externally distribute the
performance characteristics of the Ported Analysis Program or any Ported
Enhanced Analysis Program without submitting the performance
characteristics to HP thirty (30) days prior to the external distribution
thereof for HP's review and comment. The limitations set forth herein
shall not apply to any information which is in the public domain and no
rights in the information provided to HP are granted to HP under this
Section.
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10(F) HP agrees not to externally distribute the performance characteristics of
the Ported Analysis Program or any Ported Enhanced Analysis Program
without submitting the performance characteristics to Xxxxxxx for the
review and approval of Xxxxxxx thirty (30) days prior to the external
distribution thereof and any such approval by Xxxxxxx shall be provided in
writing within thirty (30) days of Quinton's receipt thereof and may not
be unreasonably withheld by Xxxxxxx.
SECTION 11: COPYRIGHT
11(A) Xxxxxxx and Affiliate Companies agree to include HP copyright notices in
the Ported Physician's Guide and embedded in the Source Code and Object
Code of the Ported Analysis Program and any Ported Enhanced Analysis
Program.
SECTION 12: TERM AND TERMINATION
12(A) Term. This Agreement shall be effective upon the Effective Date specified
at the beginning hereof and shall remain in force, unless otherwise
terminated as provided herein, for automatically renewable terms of five
(5) years. In the event that Xxxxxxx or any Affiliate Company for
Quinton's account fails to pay HP a royalty for five (5) consecutive
calendar quarters, beginning after regulatory approval by the FDA as
necessary for the sale, license or other transfer of the Licensed Product
to an End User for the first Licensed Product, then such Agreement shall
be subject to termination pursuant to Section 12(B)(iii) set forth below.
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12(B) Termination.
(i) Beginning with the first day of the third year following the
Effective Date of this Agreement, HP shall have the right to
terminate this Agreement without cause upon written notice to
Xxxxxxx. Such termination under this Section shall become effective
three (3) years from the date of receipt of such notice of
termination by Xxxxxxx.
(ii) Xxxxxxx shall have the right to terminate this Agreement without
cause upon written notice to HP. Such termination under this Section
shall become effective thirty (30) days after the date of receipt by
HP of such notice of termination. Any portion of the $500,000
payment specified in Section 3(A) and as possibly reduced by Section
5(E), which has not already been paid by Xxxxxxx shall become
immediately due and payable upon receipt by HP of such notice of
termination. In addition, Xxxxxxx shall remain obligated to pay any
undisputed payments or royalties pursuant to Sections 5(A) (as
possibly reduced by 5(D)), 9, and 13(A) that are due or owing prior
to the effective date of such notice of termination. This paragraph
shall not apply to the evaluation period set forth in section 3(D).
(iii) In the event that Xxxxxxx shall fail to comply with any of its
material obligations under this Agreement after HP has given thirty
(30) days written notice of such failure to Xxxxxxx, which notice
shall fully specify the obligation with which Xxxxxxx has not
complied, then HP, upon further written notice to Xxxxxxx, may
terminate this Agreement thirty (30) days after such further written
notice. Any portion of the $500,000 payment
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specified in Section 3(A) and as possibly reduced by Section 5(E),
which has not already been paid by Xxxxxxx shall become immediately
due and payable upon such termination. In addition, Xxxxxxx shall
remain obligated to pay any undisputed payments or royalties
pursuant to Sections 5(A) (as possibly reduced by 5(D)), 9, and
13(A) that are due or owing prior to the date of such termination.
(iv) In the event that HP shall fail to comply with any of its material
obligations under this Agreement after Xxxxxxx shall have given
thirty (30) days written notice of such failure to HP, which notice
shall fully specify the obligation with which HP has not complied,
then Xxxxxxx, upon further written notice to HP, may terminate this
Agreement thirty (30) days after such further written notice, and no
further payments under Section 3(A) and 5(A) shall be paid to HP.
Furthermore, if such failure occurs prior to the fifth anniversary
of the Effective Date of this Agreement, then HP shall be obligated
to return a prorated portion of Quinton's payments under Section
3(A) with such proration being calculated by multiplying the
payments made by Xxxxxxx and Affiliate Companies for Quinton's
account under Section 3(A) times the number of months remaining
until the fifth anniversary of the Effective Date of this Agreement
and dividing this amount by the total number of months between the
first royalty generating sale by Xxxxxxx or an Affiliate Company
pursuant to Section 5 and the number of months until the fifth
anniversary of the Effective Date of this Agreement. In no event
shall HP's obligation under this Section 12(B)(iv) to return a
prorated portion of Quinton's payments under Section 3(A) exceed the
total amount actually paid to HP by Xxxxxxx and Affiliate Companies
for Quinton's account under Section 3(A).
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(v) To the extent permitted by bankruptcy laws, either party shall have
the right to terminate this Agreement in the event of the filing of
a voluntary or involuntary petition of bankruptcy of the other
party.
12(C) Survival. In the event of any termination of this Agreement, those
Sections that by their nature would survive termination shall survive and
continue in effect and shall inure to the benefit of and be binding upon
the parties and their legal representatives.
SECTION 13: ENHANCEMENTS AND ANOMALIES
13(A) HP agrees to make each Enhanced Analysis Program available to Xxxxxxx no
later than 45 days from the release of the Enhanced Analysis Program to
end users of HP and to give Xxxxxxx a ninety (90) day option of developing
a corresponding Ported Enhanced Analysis Program. If Xxxxxxx accepts said
option in writing within the ninety (90) day option period, Xxxxxxx agrees
to pay HP one hundred thousand dollars ($100,000.00) as consideration for
the License granted herein for that specific Enhanced Analysis Program.
Such payments shall be due within thirty (30) days of the acceptance by
Xxxxxxx of said option and shall be paid by Xxxxxxx or an Affiliate
Company for Quinton's account. Contingent upon no payments due hereunder
being in arrears from Xxxxxxx and Affiliate Companies, Xxxxxxx and
Affiliate Companies shall have the right to upgrade all then existing
Licensed Products (for which a royalty as set forth in Section 5 hereof
has been paid) with the resulting Ported Enhanced Analysis Program without
payment to HP of an additional unit royalty as set forth in Section 5
hereof.
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13(B) Xxxxxxx shall have the right to accept or reject each Enhanced Analysis
Program without prejudice to the subsequent acceptance or rejection of
other Enhanced Analysis Programs and shall not otherwise affect Quinton's
or Affiliate Company's rights granted under this Agreement.
13(C) HP agrees to waive the one hundred thousand dollar ($100,000.00) payment
as set forth in this Section 13 for the Enhancement to the HP ECG
Measurement Program Release 7 that is project code named Crystal, if and
when it is released by HP. Contingent upon no payments due hereunder being
in arrears from Xxxxxxx and Affiliate Companies, Xxxxxxx and Affiliate
Companies shall have the right to upgrade all then existing Licensed
Products (for which a royalty as set forth in Section 5 hereof has been
paid) with the resulting Ported Enhanced Analysis Program without payment
to HP of an additional unit royalty as set forth in Section 5 hereof.
13(D) HP agrees that the one hundred thousand dollar ($100,000.00) payment as
set forth in this Section 13 does not apply to corrections of anomalies
and improvements in the Analysis Program that do not qualify as
Enhancements. Xxxxxxx and Affiliate Companies shall have the right to
upgrade all then existing Licensed Products (for which a royalty as set
forth in Section 5 hereof has been paid) with such corrections of
anomalies and improvements without payment to HP of an additional unit
royalty as set forth in Section 5 hereof.
13(E) HP agrees to provide technical support and correction of anomalies in the
Analysis Program and any Enhanced Analysis Program accepted under Section
13(A) herein according to the then in effect life cycle classification
code of the specific version of such HP software. HP shall provide Xxxxxxx
with written notice at least
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ninety (90) days prior to any reclassification of the Analysis Program and
Enhanced Analysis Program from active to discontinued as set forth below
and such notice shall specify the date on which such program shall be
classified as obsolete. The current life cycle classification code is as
follows:
(i) Active - HP software is "Active" if it is part of an HP product that
is actively marketed by HP on a broad scale. Technical support is
available for Active HP software, and it is maintained to correct
anomalies based on market need.
(ii) Discontinued - HP software is "Discontinued" if it is no longer part
of any HP product that is actively marketed by HP on a broad scale.
Technical support is available for Discontinued HP software, and it
is maintained only to the extent HP deems necessary to correct
serious and critical anomalies.
(iii) Obsolete - HP software is "Obsolete" after three (3) years past the
date when the HP software was classified as Discontinued. HP has no
responsibility to provide any technical support or correct any
anomalies for Obsolete HP software. However, HP, at its sole
discretion, may offer time and material support on a best efforts
basis.
13(F) HP agrees to promptly enter all possible anomalies in the Analysis Program
and any Enhanced Analysis Program accepted under Section 13(A) herein
reported to HP by Xxxxxxx into HP's normal anomaly tracking and resolution
process, and to provide a written report to Xxxxxxx on a monthly basis
detailing HP's disposition of such possible anomalies.
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13(G) Both parties agree that any disagreement between a medical doctor's
opinion and the output of the Analysis Program, the Ported Analysis
Program, any Enhanced Analysis Program, or any Ported Enhanced Analysis
Program shall not be considered an anomaly.
SECTION 14: RECALLS
14(A) If either party determines that it is necessary to recall any product
incorporating the Analysis Program, Ported Analysis Program, any Enhanced
Analysis Program accepted by Xxxxxxx under Section 13(A) above, or any
Ported Enhanced Analysis Program, it shall immediately notify the other
party.
14(B) Prior to commencing any such recall, the parties shall review with one
another the need for a recall; the manner in which the recall is to be
carried out; and any instructions or suggestions of the applicable
regulatory authorities.
14(C) If, at HP's sole discretion, HP initiates any recall of the Analysis
Program (or any Enhanced Analysis Program that has been accepted by
Xxxxxxx under Section 13(A) above) that necessitates a recall of the
Ported Analysis Program (or the corresponding Ported Enhanced Analysis
Program), HP shall, at HP's sole discretion, either (i) reimburse Xxxxxxx
for expenses incurred in implementing such recall, limited to a maximum of
two hundred dollars ($200.00) times the number of Licensed Products
included in such recall, or (ii) offer to implement such recall on behalf
of Xxxxxxx at HP's expense.
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SECTION 15: LITIGATION
15(A) HP agrees to, at its expense, defend and indemnify Xxxxxxx and Affiliate
Companies, together with its officers, directors, employees, agents,
insurers, and customers for actions based on any claim that the Analysis
Program or any Enhanced Analysis Program used with a Licensed Product
infringes any patents, copyrights, trade secrets, or other intellectual
property rights, and to pay all costs associated with and damages finally
awarded in any such suit by a court of competent jurisdiction, provided
that HP is notified promptly in writing of the suit and that HP may, at
its option and expense, control the suit and receive reasonable assistance
from Xxxxxxx and Affiliate Company in defending the suit.
15(B) In the event the Analysis Program, or any Enhanced Analysis Program
accepted by Xxxxxxx under Section 13(A) herein, is enjoined from use
and/or sale as a result of such suit, HP additionally agrees to, at its
option and expense, a) obtain for Xxxxxxx the right to use and/or sell the
Analysis Program (Enhanced Analysis Program) and the right of the
Affiliate Company to sell the Analysis Program (Enhanced Analysis Program)
at no additional expense to Xxxxxxx or Affiliate Company; b) substitute a
non-infringing Analysis Program (Enhanced Analysis Program) to Xxxxxxx
having equivalent functions, features and efficiency; or c) immediately
terminate this Agreement and refund to Xxxxxxx one-half (1/2) of the
initial payments made by Xxxxxxx as set forth in Section 3(A) and one-half
(1/2) of the royalties paid in Section 5(A) during the previous three (3)
calendar years.
15(C) UNDER NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY INCIDENTAL OR
CONSEQUENTIAL DAMAGES.
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15(D) UNDER NO EVENT SHALL EITHER PARTY BE LIABLE TO DEFEND OR INDEMNIFY THE
OTHER PARTY FOR ACTIONS BASED ON ANY CLAIM OTHER THAN THE CLAIMS STATED IN
THIS SECTION 15.
SECTION 16: MISCELLANEOUS
16(A) Force Majeure. Either party shall be excused from delays in performing or
from its failure to perform hereunder to the extent that such delays or
failures result from causes beyond the reasonable control of such party;
provided that, in order to be excused from delay or failure to perform,
such party must act diligently to remedy the cause of such delay or
failure and provide prompt notice to the other party of the reason for
such delay or failure and the intended course of action to be undertaken
to remedy such delay or failure.
16(B) Section Headings: Attachments. The section and subsection headings used
herein are for reference and convenience only, and shall not enter into
the interpretation of the present Agreement.
16(C) No Waiver. No delay or omission by either party hereto to exercise any
right or power occurring upon any noncompliance or default by the other
party with respect to any of the terms of this Agreement shall impair any
such right or power or be construed to be a waiver thereof. A waiver by
either of the parties hereto of any of the covenants, conditions or
agreements to be performed by the other shall not be construed to be a
waiver of any succeeding breach thereof or of any other covenant,
condition or agreement herein contained. Unless stated otherwise, all
remedies provided for in this Agreement shall be cumulative and in
addition to and
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not in lieu of any other remedies available to either party at law, in
equity or otherwise.
16(D) Applicable Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Washington, the courts of which
shall have exclusive jurisdiction over any dispute arising hereunder
without regard to its conflict of laws provisions.
16(E) Entire Agreement. This Agreement and any Attachments hereto constitute the
entire agreement between the parties. No change, waiver or discharge
hereof shall be valid unless it is in writing and is executed by both
parties.
16(F) Notices and Contacts. Under this Agreement, if one party is required to
give notice to the other, such notice shall be deemed given if mailed by
U.S. mail, first class, postage prepaid, and addressed as first indicated
on page 1 hereof unless otherwise provided for herein. HP's principal
Xxxxxxx contact for the term of this Agreement shall be Xx. Xxxx
Xxxxxxxxxx; Xxxxxxx'x principal HP contact shall likewise be Xx. Xxxxx
Xxxxxxxxx. The names of either principal contact may be changed at any
time by written notice to the other party.
16(G) Assignment. This Agreement may not be assigned by either party or
Affiliate Company except with the written consent of the other party,
which shall not be unreasonably withheld.
16(H) Binding Effect. This Agreement shall be binding upon and shall inure to
the exclusive benefit of the respective parties, their legal
representatives, successors,
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or permitted assigns. This Agreement is not intended to, nor shall it
create any right in any other party.
16(l) Payments. Any payment due from Xxxxxxx to HP under this Agreement may be
paid by an Affiliate Company for the account of Xxxxxxx. Although an
Affiliate Company may make payments to HP for the account of Xxxxxxx,
Xxxxxxx shall be ultimately responsible to HP for all payments due
hereunder.
IN WITNESS WHEREOF, the parties have executed this Agreement in duplicate
as shown below.
HP XXXXXXX
/s/ Xxxxx Xxxx /s/ X.X. Xxxxx
-------------------------------------- --------------------------------------
Xxxxx Xxxx Date X. X. Xxxxx Date
General Manager President
Hewlett-Packard Company Xxxxxxx Instrument Company
0000 Xxxxx Xxxxx Xxxxxx 0000 Xxxxx Xxxxx Xxxxxxx
XxXxxxxxxxx, XX 00000 Xxxxxxx, XX 00000
AHPC
/s/ X. Xxxxxx
--------------------------------------
Name Date
Vice-President
--------------------------------------
Title
American Home Products Corporation
0 Xxxxxxx Xxxxx
Xxxxxxx, Xxx Xxxxxx 00000
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EXHIBIT A: EVALUATION PACKAGE
-------------------------------------- --------------------------------------
PURPOSE WHAT (FOR ELK COVE CONSUMPTION)
-------------------------------------- --------------------------------------
Evaluate clinical performance Test Bed Equipment that consists of a
PC and software, PageWriter XLi.
Example ECGs.
The PC software will run the HP
analysis program on the supplied ECGs
and provide expected outputs.
The PC software can transform "raw"
ECG data into XLi format then analyze
it. "Requires 10 seconds/channel, 500
sps, 2's complement binary data in
Intel format, 5 uV/lsb).
-------------------------------------- --------------------------------------
Execution speed Use Test Bed Equipment (see above).
Xxxxxxx can time analysis with the
XLi, and PC, then extrapolate for
their processor.
-------------------------------------- --------------------------------------
Static data structure sizes List of all static data structures,
and their (approximate) sizes.
-------------------------------------- --------------------------------------
Stack sizes List of estimated stack sizes.
-------------------------------------- --------------------------------------
Input data requirements -- patient Specs on XLi data bandwidth, sampling
data rate, bits/lsb and front-end filtering
requirements.
Method to analyze Xxxxxxx data with HP
analysis (assumes data meets HP input
format)
-------------------------------------- --------------------------------------
Input data requirements-- patient Document the input data structures.
demographics etc.
-------------------------------------- --------------------------------------
Output data structures Document the output data structures.
-------------------------------------- --------------------------------------
Estimate of time to do the port Info on 2 HP ports.
-------------------------------------- --------------------------------------
FDA -- 510k information Description of HP approach to FDA.
-------------------------------------- --------------------------------------
Numeric data types Document types of floating point and
other numbers.
-------------------------------------- --------------------------------------
Floating point operations List of floating point operations.
-------------------------------------- --------------------------------------
Code size estimate ROM size estimate of executable.
-------------------------------------- --------------------------------------
Operating system interfaces (none)
-------------------------------------- --------------------------------------
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EXHIBIT B: HP CONFIDENTIALITY AGREEMENT FOR DT DOCUMENTS
