ASSET PURCHASE AND SALE AGREEMENT
Exhibit
10.15
ASSET
PURCHASE AND SALE AGREEMENT
ASSET
PURCHASE AND SALE AGREEMENT dated as
of the 7th day of October, 2004 by and between
XXXXXXX XXXXXX PARTNERSHIP, a
Pennsylvania General Partnership, with offices at 0000 Xxxx Xxxx Xxxxx Xxxx,
Xxxxxxxxx, XX 00000 (the “Seller”), and
EYE
CARE INTERNATIONAL, INC.,
a
Delaware corporation, with offices at 0000 X. Xxxxxxxxx Xxxxxxxxx, Xxxxx 000,
Xxxxx, XX 00000 (the “Purchaser”).
W
I T N E S S E T H :
WHEREAS, the
Seller desires to sell to the Purchaser all of Seller's rights pertaining to a
“Technology” as hereinafter defined which Technology includes, in part, without
limitation, the technology described in that certain Technology Transfer
Agreement dated February 21, 1992 between Xxxxxx X. Xxxxxxxx, MD and Xxxxxx X.
Xxxxxxx (the “Technology Agreement”); and
WHEREAS, the
Purchaser desires to purchase The Technology upon the terms and conditions set
forth herein:
NOW,
THEREFORE, in
consideration of the foregoing and of the mutual promises and covenants set
forth herein, and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, it is hereby agreed as
follows:
1
ARTICLE
I
1.
Definitions.
1.1.
“Technology” means
all that which is described in this subparagraph 1.1 and subparagraphs 1.2, 1.3
and 1.4, including confidential and trade secret information of Xxxxxxx Xxxxxx
Partnership and Sight 4 Kids, Inc. (as transferred to Xxxxxxx Howson Partnership
immediately prior to the execution of this Agreement) relating to a certain
“Photoscreening Camera System” as more particularly described in that certain US
Patent No. 4,989,968, entitled “Photoscreening Camera System” together with all
of the inventions and claims described therein (the”Patent”), including all
additions and modifications thereto, whether or not filed for patents and/or
patented as part of the Patent or separate thereto, including all design,
fabrication, production, manufacturing techniques, know-how, technical
information and data, equipment design, tooling design, tooling manufacture
details regarding the said system, whether or not same is patented or
patentable.
1.2.
“Patent
Rights” means
the entire right, title and interest in and to the Technology, including, but
not limited to, Patent No. 4,989,968, and applications for Letters Patent
relating to the Technology and all continuations, divisions or
continuations-in-part of such applications as well as all Letters Patent which
shall issue thereon; all applications and patents which may issue therefrom with
respect to the aforedescribed system, together with any reissues, reexaminations
or extensions of such Letters Patent. Patent Rights also includes the entire
right, title and interest in and to the inventions disclosed and claimed in such
Letters Patent and applications for Letters Patent, whether or not
patentable.
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1.3.
“Patented
Technology” shall
mean the following: (i) that certain US Patent No. 4,989,968 entitled
“Photoscreening Camera System” together with all of the inventions and claims
described therein (the “Patent”); and (ii) all foreign patent applications and
any patents that may issue thereon.
1.4
“Trademark” shall
mean any trademark and/or service xxxx heretofore, at any time, used by Seller
and/or Sight 4 Kids, Inc. in connection with, directly or indirectly, the
Technology.
1.5
“Purchase
Price” shall
mean: (i) the issuance, at Closing, to Seller (or Seller’s
Designee(s)) of 750,000 shares of the Purchaser’s Class A common stock; (ii) the
issuance,
at Closing, to Sight 4 Kids, Inc. (and/or its designee(s)) of 187,500 shares of
Purchaser’s
Class A common stock; (iii) the issuance, on or before a date which is one
year from
the date of Closing, at Purchaser’s election, to Xxxxxxx Howson Partnership (or
its
designee(s) of 1,250,000 shares of Purchaser’s Class A common stock; and (iv)
the issuance,
on or before a date which is one year from the date of Closing, to Sight 4 Kids,
Inc. (or
its designee(s) of 312,500 shares of Purchaser’s Class A common stock.
Purchaser
agrees to register the shares issuable to Seller pursuant to the provisions of
“(i)” and
“(iii)” above of an S-8 Registration Statement, or such other form as may be
selected
by counsel, promptly upon the issuance of said securities to Seller. Provided,
however,
that Seller will unless otherwise consented to by Purchaser, abide by the
Section
144 Selling Formula as if Seller has held Purchaser’s securities for more than
one year but
less than a two-year period. Purchaser and Seller can mutually select counsel to
prepare
and file the Registration Statement with instructions to proceed as promptly as
possible,
and each will fully cooperate with expediting said counsel with a view towards
expediting
said filing.
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1.6
“Closing” shall
mean October 7, 2004, the date on which this Agreement is signed by all
parties.
1.7
“Reversionary
Rights” shall
mean the reversion of the Technology to Seller in the event Purchaser fails,
neglects or otherwise refuses to pay that portion of the purchase price referred
to in subparagraph 1.5 (ii) and (iii) and Seller elects to exercise its right or
reversion as described in Article II.
ARTICLE
II
2.
Sale
and Purchase of Technology.
(A.) In
consideration of the delivery to Seller and Sight 4 Kids, Inc. (and/or their
respective designee(s) of the shares of Purchaser’s Class A common stock as
referred to in subparagraph 1.5 above and Purchaser’s obligations as otherwise
set forth herein, Seller hereby sells, transfers and assigns to Purchaser, free
and clear of any and all liens, charges, rights, claims and other encumbrances,
other than those set forth in this Agreement, and Purchaser hereby purchases all
rights, title and interest in and to the Technology including the Patent
Rights.
(B.) The
Technology, including the Patent Rights shall, at Seller’s election, be
reassigned to Seller in the event the conditions set forth in subparagraph 1.5
above are not met or waived by Seller. In this connection, it is specifically
understood that in the event Purchaser either cannot or elects not to meet the
conditions set forth in subparagraph 1.5 (ii) and (iii) above, Seller shall have
five (5) days following one year from the date of Closing to either demand a
reassignment of the Technology, including the Patent Rights, or waive
Purchaser’s said obligations. A failure of Seller to notify Purchaser of such
election within the above time shall be deemed a waiver of Purchaser’s said
obligations.
4
ARTICLE
III
3.
Agreement
Subject to Xxxxxxxx Technology Transfer.
Purchaser is aware that Seller is the owner of the Technology pursuant and
subject to the Technology Agreement. Subject to the accuracy of Seller’s
representations as set forth in Article IV below, for so long that this
Agreement remains in full force and effect, Purchaser shall perform all of the
obligations of Xxxxxx X. Xxxxxxx, as Purchaser under the Technology
Agreement.
ARTICLE
IV
4.
Representations
and Warranties of the Seller.
The
Seller hereby represents and warrants to the Purchaser the following as of the
Closing Date:
4.1
Organization
and Good Standing. Seller
is a partnership duly organized and validly existing and in good standing under
the laws of the State of Pennsylvania.
4.2
Authority.
The
Seller has legal power to enter into this Agreement and perform its obligations
hereunder and the same will not violate any provision of law. The execution and
delivery of this Agreement and any and all other documents to be executed and
delivered by the Seller in accordance herewith, and the consummation of the
transactions contemplated hereby, have been approved by all requisite acts of
the Seller's partners and/or board of directors, as the case may
be.
4.3
Title
to Assets. Seller
has good and marketable title to all of the Technology, including the Patent
Rights, free and clear of all claims, liens and encumbrances, and the execution
of this Agreement and the performance by Seller of its obligations hereto,
including the transfer of the Technology to Purchaser will not violate any other
agreement to which the Seller or Xxxxxx X. Xxxxxxx is a party, and all
conditions precedent, if any, to said transfer have been met.
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4.4
Compliance
With Law. Seller
is not in violation of any laws, governmental orders, rules or regulations with
respect to the Technology, including the Patent Rights.
4.5
Litigation. Except
for Seller’s pending litigation as a Plaintiff against Lexotica and
LensCrafters, which litigation and proceed therefrom be retained exclusively by
Seller, there are no actions, suits, proceedings or investigations (including
any purportedly on behalf of Seller) relating to the Technology, including the
Patent Rights, pending or threatened against or affecting the Technology,
including the Patent Rights, whether at law or in equity or admiralty or before
or by any governmental department, commission, board, agency, court or
instrumentality, domestic or foreign; nor is Seller operating under, subject to,
in violation of or in default with respect to, any judgment, order, writ,
injunction or decree of any court or other governmental department, commission,
board, agency or instrumentality, domestic or foreign, relating to the
Technology, including the Patent Rights.
4.6
The
Technology Agreement, dated February 21, 1992, as herein before described is in
full force and effect.
4.7
Neither
Seller nor its predecessors in interest are in default under the Technology
Agreement and, in particular, the “Purchaser’s” obligations under subparagraphs
4.01.1, 4.01.2, 4.02, 4.03, 4.04 and 4.05 under the Technology Agreement have
either been waived or satisfied and that the Purchaser thereunder is not in
default or breach with respect to any other items set forth in Article 7.01 of
said agreement.
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4.8
Purchaser
will execute and deliver such additional documents as may reasonably be
requested to evidence the sale, transfer and assignment of the Technology,
including the Patent Rights, to enable Purchase to record same. Additionally,
Seller shall deliver all physical embodiments (written, or otherwise, including
taped notes, if any), including that relating to all work in
progress.
4.9
The
letters annexed hereto as Exhibits 1 and 1(A) were, respectively, effective to
(i) terminate any and all rights which Sight 4 Kids, Inc. may have or claim to
have in and to the Technology, including the Patent Rights; and (ii) comply with
any and all obligations of Feakings Howson Partnership to the Xxxxxxxx
Technology Transfer Agreement.
ARTICLE
V
5.
Representations
and Warranties of the Purchaser. The
Purchaser hereby represents and warrants to the Seller the following as of the
Closing Date:
5.1
Authority. The
Purchaser has legal power to enter into this Agreement and perform its
obligations hereunder and the same will not violate any provisions of law or of
the Certificate of Incorporation or By-Laws of the Purchaser. The execution and
delivery of the Agreement and all other documents to be executed and delivered
by the Purchaser in accordance herewith, and the consummation of the
transactions contemplated hereby, have been approved by all requisite acts of
the Purchaser's shareholders and/or board or directors, as the case may
be.
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5.2
Validity,
etc. This
Agreement has been duly executed and delivered by the Purchaser, is a valid and
binding obligation and agreement of it enforceable in accordance with its terms
(subject to any applicable bankruptcy or similar laws affecting the enforcement
of creditors' rights generally). The execution, delivery and performance of this
Agreement and the acquisition of the Technology, including the Patent Rights, to
be acquired by the Purchaser hereunder will not violate or result in a breach of
or constitute a default under any agreement, judgment or decree to which it is a
party or by which it or its properties or assets are bound. Seller and Purchaser
represent that, except as otherwise set forth in this Agreement, no third party
consents, approvals or any permits, authorizations, or actions of any federal,
state or local authority are required in connection with the consummation of the
transactions provided for in this Agreement.
ARTICLE
VI
6.
Sale
Documents. At the
Closing, or as soon thereafter as may be practicable (not to exceed two weeks
from the date of Closing), the Seller shall deliver to the Purchaser all
documents required to transfer title and ownership of the Technology, including
the Patent Rights, to the Purchaser including, but not limited to, a duly
executed Xxxx of Sale and any and all other documents which are reasonably
deemed necessary by the parties or their respective attorneys to give effect to
the transaction contemplated hereby.
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6.1
Resolutions.
(A) At
the Closing, or as soon thereafter as may be practicable (not to exceed two
weeks from the date of Closing), the Seller shall deliver to the Purchaser
copies of resolutions of the partners of the Seller, in a form reasonably
satisfactory to the Purchaser, approving and authorizing the transactions
contemplated hereby, certified in each case by the Secretary of the
Seller.
(B.) At
the Closing, or as soon thereafter as may be practicable (not to exceed two
weeks from the date of Closing), the Purchaser shall deliver to the Seller
copies of resolutions of the shareholders and/or board of directors of the
Purchaser, in a form reasonably satisfactory to the Seller, approving and
authorizing the transactions contemplated hereby and certified in each case by
the Secretary of the Purchaser.
ARTICLE
VII
7.
Delivery
of Assets. On the
Closing Date of this Agreement, Seller shall deliver to Purchaser copies of all
business records and agreements of Seller relat-ing to the Technology, including
the Patent Rights.
ARTICLE
VIII
8.
Conduct
Prior to Closing. Between
the date hereof and the Closing, and except as otherwise expressly consented to
in writing in advance or approved in writing in advance by
Purchaser:
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(A.)
Regular
Course of Business. Seller
shall carry on its business diligently and substantially in the same manner as
heretofore conducted, and shall not institute any new methods of management,
accounting or operation or engage in any transaction or activity relating to the
Technology, including the Patent Rights, enter into any agreement or make any
commitment relating to the Technology, including the Patent Rights, except in
the usual and ordinary course of business and consistent with past practice as
limited by the more restrictive provisions of this Agreement, where applicable,
or as otherwise specifically contemplated by this Agreement and not in violation
thereof.
(B.)
Certain
Changes. Except
as permitted by this Agreement, without the prior written consent of Purchaser,
Seller will not permit or cause the Technology, including the Patent Rights, to
be subjected to any lien.
8.1
No
Default. Seller
shall not do any act or omit to do any act, which will cause a breach of any
contract or commitment of Seller or which would cause the breach of any
representation, warranty or covenant made hereunder.
ARTICLE
IX
9.
Closing. The
closing of the transactions contemplated hereby shall take place on or about the
7th day of
October, 2004, and may be executed in counterpart by the parties
hereto.
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ARTICLE
X
10.
Personal
Obligations of Xxxxxx X. Xxxxxxx and Xxxxx X.Xxxxxx. Annexed
hereto as Schedule A is a listing of various obligations relating to, but not
liens upon, the Technology, including the Patent Rights, some of which
obligations being personally guaranteed by either Xxxxxx X. Xxxxxxx and/or Xxxxx
X. Xxxxxx.
Purchaser
shall, without assuming said obligations, use its best efforts to compromise
and/or otherwise liquidate those obligations which have been personally
guaranteed by Messrs. Xxxxxxx and Howson and may, in it sole judgment,
compromise and/or liquidate such of those obligations which have not been so
personally guaranteed but which are nonetheless deemed by the Purchaser to be in
Purchaser’s best interest for purposes of ultimately maturing the Technology,
including the Patent Rights, as contemplated by this Agreement.
ARTICLE
XI
11.
Consulting
Arrangement. The
Seller agrees to enter into an agreement with Purchaser pursuant to which the
partnership will oversee and/or, at Purchaser’s request, assist Purchaser in the
manufacturing of the PhotoScreener. In exchange for said services, Purchaser
shall pay Seller a sum equal to Seller’s net profit, before taxes, in the
manufacturing of the PhotoScreener as determined from Seller’s financial books
and records for the last six (6) months of Seller’s manufacturing activities.
This arrangement shall continue for so long as Purchaser maintains its ownership
rights in the Technology.
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ARTICLE
XII
12.
Cooperation. The
parties shall cooperate with each other fully with respect to actions required
or requested to be undertaken with respect to tax audits, administrative actions
or proceedings, licensing applications, litigation and any other matters that
may occur after the Closing Date, and each party shall maintain and make
available to the other party upon request all corporate, tax and other records
required or requested in connection with such matters.
ARTICLE
XIII
13.
Invalidity
and Severability. If any
provisions of this Agreement are held invalid or unenforceable, such invalidity
or unenforceability shall not affect the other provisions of this Agreement and,
to that extent, the provisions of this Agreement are intended to be and shall be
deemed severable.
ARTICLE
XIV
14.1
Notices. All
notices, requests, demands and other communications hereunder shall be in
writing and shall be deemed to be effective only if delivered by hand or
overnight courier, or duly mailed by certified or registered mail, return
receipt requested, to the parties at their respective addresses set forth first
hereinabove, or to such other address as each party may specify by written
notice to the other from time to time in accordance with the terms of this
Paragraph 13.
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14.2.
Governing
Law. This
Agreement and all questions relating to its validity, interpretation,
performance and enforcement (including, without limitation, provisions
concerning limitations of actions) shall be governed by and construed and
enforced, exclusively by, and in accordance with, the laws of the State of
Florida and the parties hereto consent to in personum
jurisdiction by the courts of the State of Florida and with respect to any
alleged breach by a party to this Agreement.
14.3
Benefits,
etc. The
rights created by this Agreement shall inure to the benefit of, and the
obligations created hereby shall be binding upon, the successors, heirs and
assigns of the respective parties hereto.
14.4
Entire
Agreement; Changes. This
Agreement and the instruments delivered in accordance herewith constitute the
entire agreement between the parties and supersede all prior agreements and
understandings, written or oral, between the parties relating to the subject
matter hereof. This Agreement may be modified, amended or supplemented only by a
writing signed by the party against whom enforcement of such modification,
amendment or supplement is sought.
14.5
Assignment. The
parties agree that neither party shall have the right to assign any of their
respective rights, duties or obligations under this Agreement without the prior
written consent of the other party, which consent may be withheld or denied by
said party in its sole and absolute discretion
14.6
Waiver. Waiver
by any party of a breach of any provision of this Agreement by any other party
shall not operate or be construed as a waiver of any subsequent breach by such
other party. The failure of any party hereto to take any action by reason of
such breach shall not deprive such party of the right to take action at any time
while such breach continues.
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14.7.
Brokers. The
parties agree that no broker was involved in this transaction. Each party agrees
to indemnify and hold the other harmless from and against any claim, liability,
cost and expense (including reasonable attorneys' fees) that may be incurred by
it to any broker as a result of the acts of the other party.
ARTICLE
XV
15.
“Whereas”
Clauses. The
“Whereas” clauses are incorporated herein by reference.
IN
WITNESS WHEREOF, the
parties have caused this Agreement to be duly executed as of the date and year
first above written.
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SELLER: |
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XXXXXXX
XXXXXX PARTNERSHIP. | |
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By:
/s/ Xxxxxx X.
Xxxxxxx
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Xxxxxx X. Xxxxxxx, Partner | |
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PURCHASER | |
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EYE
CARE INTERNATIONAL, INC. |
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By:
/s/ Xxxxx X.
Xxxxxx
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Xxxxx X. Xxxxxx, President and CEO |
