EXHIBIT 10.30
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is made and entered into as of the
28th day of February, 1997, by and between VISTA MEDICAL TECHNOLOGIES, INC., a
Delaware corporation, with offices at 0000 Xxxxxxx Xxxxxxx, Xxxxx X, Xxxxxxxx,
Xxxxxxxxxx 00000 ("Vista"), HEALTHCOM, INC., a Delaware corporation, with
offices at 00000 Xxxx Xxxxxxxx Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000-0000, and GDE
SYSTEMS, INC., a Delaware corporation, with offices at 00000 Xxxx Xxxxxxxx
Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000-0000 ("GDE"). (For purposes of this
Agreement, all references to "GDE" shall be deemed to include HealthCom, Inc.)
RECITALS
WHEREAS, GDE owns all right, title and interest in certain GDE technology
which includes, but is not limited to, software, documentation and other
intellectual property which it wishes to license to Vista on the terms and
conditions set forth below; and
WHEREAS, Vista desires to license on an exclusive basis certain GDE
technology for use within the Field of Use (as hereinafter defined), on the
terms and conditions set forth below and Vista desires to obtain a license on
such terms.
NOW, THEREFORE, for good and valuable consideration, the parties hereby
agree as follows:
ARTICLE 1- DEFINITIONS
1.1 "Effective Date" shall mean the date stated above.
1.2 "Improvements" shall mean improvements or derivations of the Licensed
Products developed by GDE during the term of this Agreement.
1.3 "Field of Use" shall mean, unless expressly stated otherwise, the entire
commercial medical market including, but not limited to, clinical, surgical,
diagnostic, educational, research, administrative and communications
applications.
1.4 "Licensed Products" shall mean the GDE technology listed on Exhibit A,
attached hereto and incorporated herein by reference, including Improvements.
The term Licensed Products shall include source code, object code, and
applicable documentation.
ARTICLE 2 - GRANT OF LICENSES
2.1 LICENSE. In consideration of the license fees and royalties payable by
Vista to GDE pursuant to Article 5 below and except as stated in Article 2.2,
and subject to the terms and conditions of this Agreement, GDE hereby grants to
Vista under GDE's copyrights and know-how an exclusive,
worldwide, non-transferable, except as provided for in Article 15.5, license for
the Licensed Products to make, modify, use, prepare derivative works, market and
sublicense others for use in the Field of Use. Vista shall have no right to
sublicense any other rights granted hereunder, unless prior written approval has
been given by GDE. (Such approval to be given in GDE's sole and absolute
discretion.) GDE agrees to take reasonable actions to protect the GDE technology
being licensed hereunder to Vista from unauthorized use and disclosure.
2.2 GDE RESERVATION OF RIGHTS. GDE shall retain the right to continue to use
the Licensed Products for its own internal purposes or for incorporation into
GDE products for sale or license to third parties for use other than in the
Field of Use. The parties agree that GDE may accept contracts from the
Department of Defense for the development and installation of medical
applications utilizing the Licensed Products. Vista agrees not to compete on
such Department of Defense contracts provided, however, that GDE will notify
Vista in the event that GDE elects not to bid on such program. Vista shall have
the right to accept contracts from the Department of Defense for the development
and installation of medical applications on a non-competition basis with GDE.
Any products resulting from such contracts between GDE and the Department of
Defense will be made available to Vista under Article 4.3 below.
2.3 RESTRICTIONS ON SOURCE CODE DISCLOSURE. Vista agrees not to disclose or
provide any source code of the Licensed Products to any other party without the
prior written consent of GDE, which consent shall not be unreasonably withheld.
2.4 IMPROVEMENTS. GDE shall, throughout the term of this Agreement, keep Vista
apprised of any Improvements to the Licensed Products that it has developed.
Vista shall have the right, but not the obligation, to obtain said Improvements
free of charge from GDE. All Improvements provided to Vista shall be considered
to be part of the Licensed Products for purposes of this Agreement.
2.5 ASPRIN TRADEMARK LICENSE. In consideration of the license fees and
royalties payable by Vista to GDE pursuant to Article 5 below, and subject to
the terms and conditions of this Agreement, GDE hereby grants to Vista an
exclusive, worldwide, nontransferable, except as provided for in Article 15.5,
license to use the registered trade xxxx and service xxxx "ASPRIN" solely for
use in conjunction with Vista's marketing efforts for the ASPRIN Licensed
Product.
2.6 LICENSE TO XXXX "HEALTHCOM". In consideration of the license fees and
royalties payable by Vista to GDE pursuant to Article 5 below, and subject to
the terms and conditions of this Agreement, GDE hereby grants to Vista a
non-exclusive, worldwide, non-transferable, except as provided for in Article
15.5, license to use the xxxx "HealthCom" for use in conjunction with Vista's
marketing efforts for the Licensed Products. Vista understands and acknowledges
that this license from GDE is solely based on whatever interests GDE or
HealthCom, Inc. may have in the xxxx "HealthCom".
2.7 TRADEMARK USAGE. Except as provided for in Articles 2.5 and 2.6 above,
nothing in this Agreement shall grant Vista any right, title, license or
interest in, to or under any of GDE's trademarks including, but not limited to,
the trademarks "GDE" or "GDE Systems, Inc."
2.8 COPYRIGHT NOTICE. All copies of Licensed Products made by Vista, or made
on Vista's behalf,
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shall bear the copyright notices and other proprietary markings as appearing on
the Licensed, Products delivered to Vista by GDE.
ARTICLE 3 - DELIVERY OF LICENSED PRODUCTS
Upon execution of this Agreement by both parties, GDE shall within thirty (30)
days deliver to Vista the Licensed Products. Vista understands and acknowledges
that the Licensed Products may have been developed through GDE's independent
research and development funds and therefore is provided on an "AS IS" basis.
Vista further understands and acknowledges that the ability to use the Licensed
Products provided herein may be dependent upon utilizing other third party
technology, which is not being provided to Vista by GDE under the terms of this
Agreement.
ARTICLE 4 - OWNERSHIP AND FURTHER DEVELOPMENT
4.1 LICENSED PRODUCTS. GDE owns all right, title and interest in the Licensed
Products. Vista shall have no rights in the Licensed Products, except as
expressly provided for in Article 2 above.
4.2 VISTA DEVELOPMENTS.
(a) Vista will continue development of communications software for medical
applications, focusing initially on the provision of information to surgeons,
and the manipulation and management of this information. Vista intends to
market communications software packages to the medical industry, either as
independent products or as software modules of capital equipment installed and
serviced by Vista.
(b) Vista will own all right, title and interest to any new intellectual
property which is developed by Vista ("Vista Product(s)"). GDE will have the
right of first refusal to license such Vista Product(s) for non-medical
markets at a royalty rate of ***. The parties will enter into a separate
license agreement for the licensing of such Vista Product(s) by GDE pursuant
to this Article 4.2(b).
(c) Vista's ownership, right, title and interest to derivative works
extends only to the material developed by Vista, as distinguished from the
Licensed Products employed in the work, and does not imply any exclusive right
in the Licensed Products, other than those described herein. The ownership of
such derivative works is independent of, and does not affect or enlarge the
scope, duration, or subsistence of, any ownership of the Licensed Products.
4.3 GDE DEVELOPMENTS. As GDE develops new intellectual property not covered by
the license granted in Article 2.1 above, Vista will have right of first refusal
to exclusively license such intellectual property for the Field of Use on terms
to be agreed upon. GDE will own all right, title and interest in such
intellectual property. Vista's right of first refusal shall not apply to
intellectual property developed by GDE for which GDE does not retain all right,
title and interest.
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ARTICLE 5 - LICENSE FEES AND ROYALTIES
5.1 LICENSE FEE. In consideration of the rights granted by GDE to Vista
pursuant to this Agreement, Vista shall pay a non-refundable license fee of Five
Hundred Thousand Dollars ($500,000.00) payable as follows:
(i) $250,000.00 in Vista stock at the price set at an IPO; this amount
shall not be considered an advance against future royalties; and
(ii) $250,000.00 by December 31, 1998, as a combination of royalty payments
made through such date and a royalty advance creditable against future
royalties due thereafter.
5.1.1 STOCK. Vista will provide the stock to GDE within ten (10) business
days of the close of Vista's IPO. If the IPO does not occur prior to June 30,
1997, then Vista shall issue said stock as soon as possible thereafter, the
price per share will be the fair market value as determined by Vista's Board of
Directors.
5.1.2 STOCK REPRESENTATIONS. GDE agrees to, and does, make the
representations and agreements as set forth in Exhibit B, attached hereto and
incorporated herein by reference.
5.2 ROYALTIES. For the purpose of calculating royalties due hereunder,
the following term shall have the following meanings:
"Sales Revenue" shall mean the net sales revenue received by Vista from
third party customers, excluding freight and similar charges. If the software
product incorporating GDE Intellectual Property is a module which is not
separately billed to the third party customer, then GDE's.royalty will be based
upon a proportion of the total price billed. Such proportion will be determined
based upon the overall price of the system and the sales value of the module if
it was separately billed, such determination to be made by GDE and Vista in good
faith and verifiable by GDE by means of normal audit rights.
5.3 ROYALTY PAYMENT. During the license exclusivity period, Vista will pay
to GDE an amount equal to *** on Sales Revenues of software products based
upon, or derived from, any Licensed Product, or part thereof.
5.4 QUARTERLY PAYMENTS. All royalty payments owed by Vista to GDE under this
Agreement will be payable on a calendar quarter basis no later than thirty (30)
days after the end of each calendar quarter. Royalty reports shall be provided
by Vista to GDE with each royalty payment. The royalty report shall show (i)
the number of Licensed Products invoiced during the calendar quarter in
question; (ii) the total gross sales invoiced amount; (iii) the Sales Revenue
amount; (tv) the amount of royalties due and (v) the method of calculation of
royalties for such calendar quarter.
5.5 BOOKS AND RECORDS: AUDIT RIGHTS. Vista agrees to make and maintain such
books, records
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*** Confidential Treatment Requested
and accounts as are reasonably necessary to verify the payments due GDE under
this Agreement. At GDE's sole expense, an independent certified public
accountant, selected by GDE and reasonably acceptable to Vista, who agrees to
sign a nondisclosure agreement may, upon reasonable notice and during normal
business hours, but no more than once each calendar year, inspect only those
records of Vista on which the payments to GDE under this Agreement are based.
The accountant may report only the accuracy of the payments, but may not
disclose confidential information, such as specific customers. If any audit
hereunder reveals that Vista has failed properly to account for and pay
royalties owing to GDE hereunder, and the amount of any royalties which Vista
has failed properly to account for and pay during any twelve (12) month period
exceeds by ten percent (10%) or more the royalties actually accounted for and
paid to GDE for such period, Vista shall reimburse GDE for the cost of the
accountant. Vista shall also, within thirty (30) days after notification by
GDE, pay to GDE any amounts shown as due under such audit, regardless of whether
Vista is required to reimburse GDE for the cost of the accountant.
ARTICLE 6 - RELEASE OF EMPLOYEES
GDE agrees to release three (3) employees to join Vista, including Xxxxxx X.
Xxxxx, President of HealthCom, and two (2) engineers to be mutually determined.
It is understood that Vista must make independent arrangements with each of the
employees, although GDE agrees to facilitate the transfer to the extent
possible. Vista agrees not to solicit or recruit for hire other GDE or
HealthCom employees.
ARTICLE 7 - SERVICES AGREEMENT
GDE and Vista agree to negotiate in good faith to enter into a Services
Agreement whereby Vista may contract for consultancy services from GDE on a
project-by-project basis, on terms to be mutually agreed at the outset of each
project.
ARTICLE 8 - TERM AND TERMINATION
8.1 TERM. The term of this Agreement shall commence on the Effective Date and
shall continue in full force and effect unless terminated pursuant to Article
8.2 or 8.3 below.
8.2 TERMINATION FOR BREACH. In the event of a material breach of this
Agreement, the non breaching party shall be entitled to terminate this Agreement
by written notice to the breaching party if such breach is not cured within
thirty (30) days after written notice is given by the non breaching party to the
breaching party specifying the breach. The parties agree that the occurrence of
either of the following shall constitute a material breach of this Agreement;
(i) two (2) consecutive royalty payments not paid when due under Article 5, and
Vista fails to pay such royalties within the thirty (30) days after written
notification from GDE; or (ii) Vista fails to comply with the provisions of
Article 15.2 of this Agreement within thirty (30) days after written
notification from GDE.
8.3 TERMINATION FOR INSOLVENCY. This Agreement may be terminated by a party,
with notice,
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(i) upon the institution by or against the other party of insolvency,
receivership or bankruptcy proceedings which proceedings are not dismissed
within sixty (60) days; or (ii) upon the other party's assignment for the
benefit of creditors; or (iii) upon the other party's dissolution or ceasing to
do business.
8.4 EFFECT OF TERMINATION.
(a) If GDE terminates this Agreement pursuant to Articles 8.2 or 8.3 hereof,
(a) the licenses granted to Vista under Article 2 of this Agreement shall
terminate; (b) all rights to the Licensed Products shall revert to GDE; and (c)
all rights to develop, make, have made, use, market and sell all Licensed
Products shall revert to GDE. Notwithstanding anything to the contrary herein,
in the event of a termination pursuant to Article 8.2 or 8.3 above, the licenses
granted to end users by Vista pursuant to this Agreement shall remain in full
force and effect.
(b) If Vista terminates this Agreement pursuant to Articles 8.2 and 8.3 hereof,
the provisions of Sections 2.1, 2.2, 2.3, 2.4, 2.5, 2.6, 2.7, Article 4, Article
5, 8.4 and 8.5 of this Agreement shall survive; provided, however, if Vista
fails to perform or observe or otherwise breaches a material obligation under
this Agreement, which failure or breach is unremedied for a period of thirty
(30) days after receipt by Vista of written notice thereof from GDE, GDE shall
have the right to terminate this Agreement with the same effect as if GDE were
to terminate this Agreement pursuant to Article 8.4(a) hereof.
8.5 SURVIVAL.
(a) Termination of this Agreement for any reason shall not release either party
hereto from any liability which at the time of such termination has already
accrued to the other party.
(b) In the event this Agreement is terminated for any reason, Vista shall have
the right to sell or otherwise dispose of its existing stock of Licensed
Products.
(c) Articles 10, 11, 12, 14 shall survive the expiration or termination of this
Agreement for any reason.
(d) All rights and licenses granted under or pursuant to this Agreement by GDE
to Vista are, and shall otherwise be deemed to be, for purposes of
Section 365(n) of Title 11 of the United States Code (the "Bankruptcy Code"),
licenses of rights to "intellectual property" as defined under Section 101(56)
of the Bankruptcy Code. The parties agree that Vista as a licensee of such
rights under this Agreement, shall retain and may fully exercise all of the
rights and elections under the Bankruptcy Code. The parties further agree that,
in the event of the commencement of a bankruptcy proceeding by or against GDE
under the Bankruptcy Code, Vista shall be entitled to a complete duplicate of
(or complete access to, as appropriate) any such intellectual property and all
embodiments of such intellectual property, and the same, if not already in its
possession, shall be promptly delivered to Vista upon any such commencement of a
bankruptcy proceeding.
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ARTICLE 9 - INTELLECTUAL PROPERTY INDEMNITY
GDE shall indemnify, hold harmless and defend Vista from and against any and all
suits, actions, damages, costs, losses, expenses (including reasonable
attorneys' fees) and other liabilities arising from or in connection with any
claim that the Licensed Products in the form delivered to Vista infringes or
violates any United States patent, copyright, trademark, trade secret or other
proprietary right of any third party. Vista agrees to promptly notify GDE in
writing of such claim, suit or proceeding and give GDE authority to proceed as
contemplated herein, and, at GDE's expense, give GDE proper and full information
and assistance to settle and/or defend any such claim, suit or proceeding.
Without limiting GDE's obligations as set forth herein, GDE may, at its sole
option, either procure for Vista the right to continue using the Licensed
Products in the form delivered, or, if such is not possible, replace or modify
the Licensed Products so that it becomes non-infringing. During the time when
GDE is contemplating or implementing its options, Vista shall have no obligation
to make royalty payments to GDE for such Licensed Items that are the subject of
the infringement claim. GDE shall have no liability for any above mentioned
claim based upon the use of other than the unaltered version of the Licensed
Products if such infringement would have been avoided by the use of the
unaltered version of the Licensed Products. In the event Vista becomes aware of
a potential infringer of GDE's intellectual property rights in the Licensed
Products, Vista shall promptly notify GDE, in writing, and GDE agrees to use
reasonable efforts to promptly protect GDE's intellectual property rights.
ARTICLE 10 - CONFIDENTIALITY
10.1 NONDISCLOSURE. Except as otherwise provided for in this Agreement, each
party (the "Receiving Party") shall hold in confidence and not disclose to any
third party any business or technical information that is disclosed to it by the
other party in a tangible form marked "Proprietary" or that is so disclosed to
it orally and confirmed in writing as Proprietary within thirty (30) days after
its initial disclosure ("Proprietary Information"). Proprietary Information of
a party shall not include:
(i) Information which at the time of disclosure is published or
otherwise generally available to the public: or
(ii) Information which, after disclosure by the other party, is
published or becomes generally available to the public through no
fault of the Receiving Party; or
(iii) Information which the Receiving Party can document was or is in
its possession at the time of disclosure and was not acquired
directly or indirectly from such party.
10.2 EXCEPTIONS. The Receiving Party may disclose Proprietary Information of
the other:
(a) In connection with the order of a court of law or in compliance with
laws or regulations relating to registrations or sale of securities, or as is
reasonably necessary in connection with the prosecution, maintenance or
enforcement of the Intellectual Property Indemnity, Article 9.
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(b) If such information is also rightfully acquired from a third party
who, to the best of such party's knowledge and belief, is entitled to rightfully
make such disclosure, but only to the extent such party complies with any
restrictions imposed by the third party.
ARTICLE 11 - WARRANTIES
11.1 WARRANTY. GDE represents and warrants that:
(a) GDE is the owner of, or has acquired the rights to, the Licensed
Products and has the full right and authority to enter into this Agreement, to
disclose any and all of the information disclosed to Vista hereunder, and to
grant the rights and licenses granted herein;
(b) GDE has not previously granted and shall not grant any rights in the
Licensed Products that are inconsistent with the rights and licenses granted to
Vista herein;
(c) To GDE's knowledge, as of the Effective Date, the Licensed Products do
not infringe any copyright, trade secret, or other proprietary rights of any
third party;
(d) GDE has not previously entered into any agreements and shall not in
the future enter into any agreements that are inconsistent with or conflict with
this Agreement or the rights and licenses granted to Vista herein; and
(e) As of the Effective Date, there are no existing or threatened actions,
suits, or claims pending against GDE with respect to the Licensed Products or
the right of GDE to enter into and perform its obligations under this Agreement.
11.2 DISCLAIMER. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT,
GDE MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY
AND FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE 12 - LIMITATION OF LIABILITY
IN NO EVENT WILL EITHER PARTY BE LIABLE UNDER ANY LEGAL THEORY FOR ANY DAMAGES,
INCLUDING, BUT NOT LIMITED TO, ANY INDIRECT, SPECIAL, INCIDENTAL OR
CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, LOST PROFITS) ARISING OUT
OF THIS AGREEMENT, EVEN IF EITHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES.
ARTICLE 13 - FORCE MAJEURE
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If the performance of this Agreement or any obligations hereunder is prevented,
restricted or interfered with by reason of fire or other casualty or accident,
supplier delay, strikes or labor disputes, war or other violence, any law,
order, proclamation, regulations, ordinances, demand or requirement of any
government agency, or any other act or condition beyond the reasonable control
of the parties hereto, the party so affected upon giving prompt notice to the
other party shall be excused from such performance to the extent of such
prevention, restriction or interference on a day for day basis. If such force
majeure event continues for more than thirty (30) days then the non affected
party may terminate this Agreement upon written notice to the other party.
ARTICLE 14 - MEDIATION/ARBITRATION
If a dispute arises out of or relates to this Agreement, or the breach thereof,
and if said dispute cannot be settled through direct discussions, the parties
agree to first endeavor to settle the dispute in an amicable manner by mediation
under the Commercial Mediation Rules of the American Arbitration Association,
before resorting to arbitration. Thereafter, any unresolved controversy or
claim arising out of or relating to this contract, or breach thereof, shall be
settled by arbitration in accordance with the Commercial Arbitration Rules of
the American Arbitration Association, and judgment upon the award rendered by
arbitrator may be entered in any court having jurisdiction thereof.
ARTICLE 15 - MISCELLANEOUS
15.1 PRODUCT LIABILITY INDEMNITY. Vista agrees to indemnify and defend GDE and
its employees and agents from and against any liability or expense arising from
any product liability claim asserted by any party as to any Licensed Product
Vista manufactured or distributed pursuant to this Agreement or as to the
exploitation of the Licensed Products pursuant to this Agreement, including
reasonable attorneys' fees, except to the extent that such claim, liability or
expense results from the gross negligence or intentional misconduct of GDE or
its employees or agents. Such indemnity and defense obligation shall apply to
any claims made by employees, subcontractors, sublicensees, customers, or other
agents of Vista as well as any member of the general public.
15.2 U.S. EXPORT CONTROLS. Vista acknowledges and gives GDE its assurances
that it will not export, or cause to be re-exported, any of the Licensed
Products or any direct products thereof, to any country unless such export, or
re-export, is expressly authorized and approved by the U.S. Department of
Commerce Export Administration Regulations.
15.3 CONFIDENTIALITY OF AGREEMENT. Both GDE and Vista agree that the terms
and conditions of this Agreement shall be treated as confidential information
and that no reference to the terms and conditions of this Agreement or to
activities pertaining thereto can be made in any form without the prior written
consent of the other party; provided, however, that the general existence of
this Agreement shall not be treated as confidential information and that either
party may disclose the terms and conditions of this Agreement:
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(i) as required by any court or other governmental body;
(ii) as otherwise required by law (provided that GDE shall have the
right to review and comment on the extent of any confidential
treatment to be requested in filings with the Securities and
Exchange Commission);
(iii) to legal counsel of the parties;
(iv) in confidence, to accountants, banks, proposed investors, and
financing sources and their advisors;
(v) in confidence, in connection with the enforcement of this
Agreement or rights under this Agreement; or
(vi) in confidence, in connection with a merger or acquisition or
proposed merger or acquisition, or the like.
15.4 WAIVER. No waiver by either party hereto of any breach or default of any
of the covenants or agreements herein set forth shall be deemed a waiver as to
any subsequent and/or similar breach or default.
15.5 ASSIGNMENTS. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and the successors or assigns of the parties
hereto: provided however, that either party may assign this Agreement, and its
rights and obligations hereunder, to any business organization that succeeds to
the business of such party to which this Agreement relates.
15.6 INDEPENDENT CONTRACTORS. The relationship of the parties hereto is that
of independent contractors. Neither party hereto is an agent, partner or joint
venture of the other for any purpose.
15.7 NOTICES. Any notice required or permitted to be given to the parties
hereto shall be deemed to have been properly given if delivered in person, when
received if mailed by first-class certified mail to the other party at the
appropriate address as set forth below or to such other addresses as may be
designated in writing by the parties from time to time during the term of this
Agreement or when transmitted by electronic facsimile (with a confirmation copy
to be sent by mail).
Vista: Vista Medical Technologies, Inc.
0000 Xxxxxxx Xxxxxxx, Xxxxx X
Xxxxxxxx, Xxxxxxxxxx 00000
Fax (000) 000-0000
Attn: President
With a copy to:
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Xxxxxxx, Phleger & Xxxxxxxx LLP
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000 Xxxx X Xxxxxx, Xxxxx 0000
Xxx Xxxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000
Attn: Xxxxx X. Xxxxxxx, Esq.
GDE: GDE Systems, Inc.
00000 Xxxx Xxxxxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000-0000
Fax: (000) 000-0000
Attn: General Counsel
15.8 GOVERNING LAW: JURISDICTION. This Agreement shall be interpreted and
construed in accordance with the laws of the State of California, without regard
to conflicts of law principles. All disputes arising out of this Agreement
shall be subject to the exclusive jurisdiction and venue of the California state
courts of San Diego County, California (or, if there is exclusive federal
jurisdiction, the United States District Court for the Southern District of
California), and the parties consent to the personal and exclusive jurisdiction
of these courts.
15.9 COMPLETE AGREEMENT. This Agreement constitutes the final, exclusive and
complete agreement between the parties respecting the subject matter hereof, and
supersedes any prior or contemporaneous agreements. No amendment or change
hereof or addition hereto shall be effective or binding on either of the parties
hereto unless reduced to writing and executed by the party to be charged.
15.10 SEVERABILITY. In the event that any provision of this Agreement becomes
or is declared by a court of competent jurisdiction to be illegal, unenforceable
or void, such provision shall be changed and interpreted so as to best
accomplish the objectives of the original provision to the fullest extent
allowed by law and the remaining provisions of this Agreement shall continue in
full force and effect.
15.11 COUNTERPARTS. This Agreement may be executed in counterparts, each of
which shall be deemed to be an original and both together shall be deemed to be
one and the same agreement.
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IN WITNESS WHEREOF, both GDE and Vista have executed this Agreement, in
duplicate originals, by their respective officers hereunto duly authorized, the
day and year first above written.
VISTA MEDICAL
TECHNOLOGIES, INC. GDE SYSTEMS, INC.
By: /s/ Xxxx Xxxx By: /s/ Xxxxx X. Xxxxxxxx
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Name: Xxxx Xxxx Name: Xxxxx X. Xxxxxxxx
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Title: President & CEO Title: President & CEO
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HEALTHCOM, INC.
By: /s/ X. X. Xxxxx
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Name: X. X. Xxxxx
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Title: Secretary
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EXHIBIT A
LICENSED PRODUCTS
GDE SHALL DELIVER VERSIONS OF THE FOLLOWING LICENSED PRODUCTS WHICH DO NOT
CONTAIN U.S. GOVERNMENT "CLASSIFIED" INFORMATION:
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*** Confidential Treatment Requested
EXHIBIT B
REPRESENTATIONS, WARRANTIES AND AGREEMENTS OF GDE:
GDE hereby represents, warrants and agrees that:
(a) The shares of Common Stock of Vista issued in connection with the
License Agreement (the "Shares") will be "restricted securities" as such term is
used in the rules and regulations under the Securities Act of 1933, as amended
(the "Securities Act") and that such securities have not been and will not be
registered under the Securities Act or any state securities law, and that such
securities must be held indefinitely unless registration is effected or transfer
can be made pursuant to appropriate exemptions under the Securities Act (such as
Rule 144);
(b) GDE is purchasing the Shares for investment for its own account and
not with a view to or for sale in connection with any distribution thereof and
it has no intention of selling such securities in a public distribution in
violation of the federal securities laws or any applicable state securities
laws; provided that nothing contained herein will prevent GDE from selling or
transferring such securities in compliance with the terms of applicable federal
and state securities laws;
(c) GDE is an "accredited investor" within the meaning of paragraph (a) of
Rule 501 of Regulation D promulgated by the Securities and Exchange Commission
(the "Commission") and an "excluded purchaser" within the meaning of Section
25102(f) of the California Corporate Securities Law of 1968; and
(d) Vista will affix the following legend (in addition to any other
legend(s), if any, required by applicable state corporate and/or securities
laws) to certificates for the Shares:
"These securities have not been registered under the Securities Act of
1933, or any state securities laws. They may not be sold, offered for
sale, pledged or hypothecated in the absence of a registration
statement in effect with respect to the securities under all
applicable federal and state securities laws or an opinion of counsel
satisfactory to the Corporation that such registration is not required
or unless sold pursuant to Rule 144 of such Act."
(e) Prior to any proposed sale or transfer of any of the Shares, unless
(i) pursuant to and in compliance with Rule 144 or (ii) there is in effect a
registration statement under the Securities Act covering the proposed transfer,
GDE shall give written notice to Vista of GDE's intention to effect such sale or
transfer. Each such notice shall describe the manner and circumstances of the
proposed sale or transfer in sufficient detail, and shall be accompanied by
either (i) a written opinion of legal counsel who shall be reasonably
satisfactory to Vista addressed to Vista and reasonably satisfactory in form and
substance to Vista's counsel, to the effect that the proposed sale or transfer
of the
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Common Stock may be effected without registration under the Securities Act, or
(ii) a "no action" letter from the Commission to the effect that the sale or
transfer of such securities without registration will not result in a
recommendation by the staff of the Commission that enforcement action be taken
with respect thereto, whereupon GDE shall be entitled to sell or transfer such
securities in accordance with the terms of the notice delivered by GDE to Vista.
Each new certificate evidencing the Common Stock so sold or transferred shall
bear the appropriate restrictive legends set forth above, except that such
certificate shall not bear such restrictive legend if, in the opinion of counsel
for Vista, such legend is not required in order to establish or assist in
compliance with any provisions of the Securities Act or any applicable state
securities laws.
(f) GDE hereby agrees that, during the period of duration specified by
Vista and an underwriter of common stock or other securities of Vista, following
the effective date of a registration statement of Vista filed under the
Securities Act, it shall not, to the extent requested by Vista and such
underwriter, directly or indirectly sell, offer to sell, contract to sell
(including, without limitation, any short sale), grant any option to purchase or
otherwise transfer or dispose of (other than to donees who agree to be similarly
bound) any securities of Vista by it at any time during such period; PROVIDED,
HOWEVER, that:
i) such agreement shall not exceed 180 days for the first such
registration statement of Vista which covers Common Stock (or other securities)
to be sold on its behalf to the public in an underwritten offering;
ii) such agreement shall not exceed 90 days for any subsequent
registration statement of Vista which covers Common Stock (or other securities)
to be sold on its behalf to the public in an underwritten offering; and
iii) all execution officers and directors of Vista enter into similar
agreements.
In order to enforce the foregoing covenant, GDE agrees and acknowledges
that Vista may impose stop-transfer instructions with respect to the Shares
until the end of such period. Notwithstanding the foregoing, the obligations
described in this section shall not apply to a registration relating solely to
employee benefit plans on Form S-8 or similar forms which may be promulgated in
the future, or a registration relating solely to a SEC Rule 145 transaction on
form S-4 or similar forms which may be promulgated in the future.
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