EXHIBIT 10.66
NON-EXCLUSIVE LICENSE AGREEMENT
THIS NON-EXCLUSIVE LICENSE AGREEMENT, dated as of September 7, 2001, is by
and among LASERSIGHT INCORPORATED, a Delaware corporation, having an address of
0000 Xxxxxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxx Xxxx, Xxxxxxx 00000 ("Parent"),
LASERSIGHT TECHNOLOGIES, INC., a Delaware corporation, having an address of 0000
Xxxxxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxx Xxxx, Xxxxxxx 00000 ("Technologies")
(Parent and Technologies are hereinafter jointly and collectively referred to as
"LASERSIGHT") 0nd BAUSCH & LOMB INCORPORATED, a New York corporation, having an
address of One Bausch and Lomb Place, Rochester, New York ("BAUSCH").
RECITALS:
A. LASERSIGHT owns United States Patent No. 5,520,679 and related patent
properties ("Patent No. '679" which shall hereinafter mean any patent
(including but not limited to, reissues, reexaminations, divisions,
continuations, continuations-in-part, renewals, extensions, and additions),
any application therefor, and any patent which may issue upon any such
application which patent or application, mediately or immediately, is based
on or claims the benefit, in whole or in part, of the earlier filing date
of either United States Patent Application S.N. 985,617 filed December 3,
1992, or United States Patent Application S.N. 218,319 filed March 25, 1994
or both, including, without limitation the CIP (as defined herein)).
B. On April 6, 2001, Technologies filed at the United States Patent and
Trademark Office (the "Patent and Trademark Office") United States Patent
Application S.N. 826,843 that claims priority to the applications leading
to United States Patent No. 5,520,679 (the "CIP").
X. XXXXXX desires to acquire, and LASERSIGHT is willing to grant, a
nonexclusive license (without the right to sub-license) under Patent No.
'679.
NOW, THEREFORE, the parties hereto agree as follows:
ARTICLE I. DEFINITIONS
As used above and throughout this License Agreement, the definitions of the
following terms have the meanings set forth below:
(a) "Affiliated Company" shall mean any person or entity (each a "Person")
controlling, controlled by or under common control with another Person. For
purposes of this definition, "control" (including, with correlative
meaning, the terms "controlled by" and "under common control with"), as
used with respect to any Person, shall mean the possession, directly or
indirectly, of the exclusive power to direct and cause the direction of the
management and policies of such Person, whether through the ownership of
voting securities, by contract or otherwise.
(b) "Agreement" shall mean this Non-Exclusive License Agreement.
(c) "Change in Control" as to Parent and Technologies shall mean: (i) the
acquisition by any person, entity or group (within the meaning of Section
13(d)(3) or 14(d)(2) of the Securities and Exchange Act of 1934, as amended
(the "1934 Act")) of beneficial ownership (within the meaning of SEC Rule
13d-3 under the 0000 Xxx) of 50% or more of the then-outstanding common
stock of either Parent or Technologies, as applicable (such transferring
party being hereinafter referred to as the "Transferring Party"); provided,
however, that no Change of Control shall occur solely by reason of (A) any
such acquisition by a corporation with respect to which, after such
acquisition, more than 60% of the then-outstanding common shares of such
corporation are then beneficially owned, directly or indirectly, by the
Persons who were the beneficial owners of the common stock of the
Transferring Party immediately before such acquisition in substantially the
same proportions as their respective ownership, immediately before such
acquisition, of the then-outstanding common stock of the Transferring
Party, (B) any acquisition by the Transferring Party or (C) any acquisition
by an employee benefit plan of the Transferring Party; or (ii) approval by
the stockholders of either Parent or Technologies (such approving party
being hereinafter referred to as the "Approving Party") of (A) a merger,
reorganization or consolidation ("Transaction") with respect to which
Persons who were the respective beneficial owners of the common stock of
such Approving Party immediately before the Transaction do not, immediately
thereafter, beneficially own, directly or indirectly, more than 60% of the
then-outstanding common shares of the corporation resulting from the
Transaction, or (B) the sale or other disposition of all or substantially
all of the assets of the Approving Party.
(d) "Effective Date" shall mean the date first above written.
(e) "Net Royalties" shall mean all monetary consideration, including without
limitation all royalties, licensing fees, per-procedure fees or the like,
received by LASERSIGHT or any Affiliated Company of LASERSIGHT derived, in
any way, from licensing Patent No. '679 in excess of all direct,
out-of-pocket litigation, arbitration or other dispute resolution costs and
expenses, including attorney fees, expert fees and court related expenses,
incurred by LASERSIGHT or any Unrelated Third Party receiving monetary
consideration derived from the licensing of Patent '679 other than TLC (as
defined herein) following the Effective Date and in connection with the
enforcement of Patent No. '679 (the "Litigation Costs") provided that for
purposes of calculating Net Royalties in no event will the aggregate of all
such Litigation Costs exceed $3,000,000. If LASERSIGHT and/or such
Unrelated Third Party incurs Litigation Costs in excess of $3,000,000, the
amount of such excess will not be deducted from the monetary consideration
utilized in the calculation of Net Royalties hereunder. Litigation Costs
shall be deducted only as such costs are paid by LASERSIGHT or such other
Unrelated Third Party. For purposes of calculating Net Royalties the amount
required to be paid to TLC The Laser Centers Patents Inc. ("TLC") pursuant
to that certain Exclusive License Agreement dated August 20, 1998 (the "TLC
License") as a result of the receipt of any monetary consideration for
licensing Patent No. '679 shall not be considered to have been received by
LASERSIGHT. For purposes of calculating Net Royalties all monetary
consideration, including, without limitation all royalties, licensing fees,
per-procedure fees or the like that are derived, in any way, from licensing
Patent No. '679, but are received by an Unrelated Third Party as a result
of, or by reason of, LASERSIGHT assigning or otherwise transferring,
directly or indirectly, or consenting to or permitting the assignment or
other transfer of the right to receive such monetary consideration, shall
be deemed to be received by LASERSIGHT and included in the calculation of
Net Royalties, provided that as described in the immediately preceding
sentence, the amounts paid to TLC related to licensing Patent No. '679
pursuant to the TLC License shall not be considered for purposes of
calculating Net Royalties.
(f) "Patent Materials" means (i) all publicly available documents related to
Patent No. '679 that are in the possession of LASERSIGHT or its advisors,
including, without limitation, copies of all patents and applications and
correspondence between patent offices and applicant concerning any patent
property including abandoned applications within the meaning of Patent No.
'679, (ii) all documents of any kind or nature that relate to the
prosecution history of Patent No. '679, including, without limitation the
CIP, that are in the possession of LASERSIGHT or its advisors, and (iii)
all other documents and information provided by LASERSIGHT under Section
3.1 of this Agreement.
(g) "Ophthalmic" shall mean of or relating to the care or treatment of the eye.
(h) "Patent No. '679" is defined in Recital A and as of the Effective Date
consists of those pending and issued properties described on Exhibit A.
(i) "Product" shall mean any apparatus (a) that is capable of performing an
Ophthalmic method or procedure, and (b) that would, except for this
Agreement, infringe a claim in Patent No. '679.
(j) "Unrelated Third Parties" shall mean any person or entity that is not an
Affiliated Company.
ARTICLE II. WARRANTIES AND COVENANTS
2.1 LASERSIGHT warrants that (i) it is the owner of the entire right, title and
interest to each and all of the patent properties that comprise Patent No.
'679, (ii) it has the full right to grant a nonexclusive license under
Patent No. '679 as provided in this Agreement, (iii) Exhibit A sets forth a
complete and accurate list of all pending and issued properties that, as of
the Effective Date, comprise Patent No. '679, and (iv) the ownership of the
properties indicated on Exhibit A is consistent with the books and records
of both LASERSIGHT and the Patent and Trademark Office.
2.2 LASERSIGHT warrants that it has the full power, right and authority to
enter into and carry out its obligations under this Agreement and that this
Agreement constitutes the valid and legally binding obligation of
LASERSIGHT, enforceable in accordance with its terms and conditions.
2.3 BAUSCH warrants that BAUSCH has full power, right and authority to enter
into and carry out its obligations under this Agreement and that this
Agreement constitutes the valid and legally binding obligation of BAUSCH,
enforceable in accordance with its terms and conditions.
2.4 BAUSCH acknowledges that it is not relying on any statements made by
LASERSIGHT with respect to the validity and enforceability of Patent No.
'679. Patent No. '679 is being licensed on an "AS-IS" basis with no
warranties of any kind, other than warranties, representations, covenants
and commitments made by LASERSIGHT in this Agreement.
ARTICLE III. DUE DILIGENCE
3.1 LASERSIGHT shall (a) deliver two copies of Patent Materials to BAUSCH and
(b) shall meet with BAUSCH to review and answer questions concerning the
Patent Materials. The parties acknowledge and agree that the Patent
Materials are being delivered to BAUSCH subject to the confidentiality
provisions of this Agreement and that the parties have a common legal
interest in keeping the Patent Materials confidential since the Patent
Materials will be utilized in order to allow BAUSCH to evaluate whether it
wants to make an additional payment to LASERSIGHT as described in Section
6.4 and eliminate the right granted to LASERSIGHT pursuant to Section 6.2
to terminate the license granted to BAUSCH pursuant to this Agreement.
3.2 Within 30 days from satisfaction of LASERSIGHT's obligations under Section
3.1, BAUSCH shall complete its due diligence concerning Patent No. '679
(said 30-day period being the "Due Diligence Period"). LASERSIGHT shall
reasonably and timely cooperate with and respond to BAUSCH during the Due
Diligence Period. LASERSIGHT acknowledges that time is of the essence given
the limited time BAUSCH has to complete its review.
3.3 Within 10 days after the end of the Due Diligence Period, BAUSCH shall
notify LASERSIGHT in writing if BAUSCH elects to eliminate the right
granted to LASERSIGHT pursuant to Section 6.2 to terminate the license
granted to BAUSCH under this Agreement (the "Election Notice").
3.4 BAUSCH shall, for a period of ten years from the Effective Date, hold the
Patent Materials in confidence and shall not either directly or indirectly
disclose or use such Materials except in connection with its due diligence
under this Article III. The obligations of confidence and non-use under
this Section 3.4 shall not apply to: (i) information which at the time of
disclosure is in the public domain; or (ii) information which thereafter
lawfully becomes a part of the public domain other than through disclosure
by or through BAUSCH in violation of this Agreement; or (iii) information
which is already in the possession of BAUSCH as shown by its written
record; or (iv) information which is lawfully disclosed to BAUSCH by a
third party not under an obligation of confidentiality to the disclosing
party with respect to said information; or (v) information which is
subsequently developed by an employee or agent of BAUSCH without actual
knowledge of the disclosure. The obligations of this Section 3.4 are
subject to Section 3.5 below. The obligations of this Section 3.4 survive
the expiration or termination of this Agreement.
3.5 If BAUSCH is requested (by oral questions, interrogatories, requests for
information or documents, subpoena, civil investigative demand or similar
process) to disclose any Patent Materials, BAUSCH agrees to notify
LASERSIGHT promptly of such request(s) and the documents requested thereby
so that LASERSIGHT may seek an appropriate protective order and/or waive in
writing BAUSCH's compliance with the provisions of this Section 3.5. It is
further agreed that, if in the absence of a protective order or the receipt
of a waiver hereunder BAUSCH is nonetheless, in the opinion of BAUSCH's
counsel, compelled to disclose the relevant Patent Materials or else stand
liable for contempt or suffer other penalty from any tribunal or
governmental or similar authority, BAUSCH may disclose such information
without liability hereunder; provided, however, that BAUSCH shall give
LASERSIGHT written notice of the information to be so disclosed as far in
advance of its disclosure as is practicable and shall use reasonable
commercial efforts to obtain an order or other reliable assurance that
confidential treatment will be accorded to such portion of the information
required to be disclosed.
ARTICLE IV. CONFIDENTIALITY OF AGREEMENT
Each party hereby covenants and agrees that it shall exercise all
reasonable efforts to maintain the terms of this Agreement that the parties may
identify prior to signing this Agreement, if any (the "Confidential Terms"), in
strict confidence and shall not disclose the Confidential Terms to any person
other than their employees and agents who have an absolute need to know that
information. In the event that under applicable securities laws, the rules of
any governmental authority, the terms of an order of a court of competent
jurisdiction or a formal discovery request any party is required to make
disclosures of any of the Confidential Terms, then before making any such
disclosure that party shall consult with the other party concerning such
requirement and shall apply and request in accordance with the rules of the
applicable governmental authority or court that the Confidential Terms be
maintained in strict confidence (e.g., in the case of a court, by obtaining the
strictest available protective order, or, in the case of the Securities and
Exchange Commission, by obtaining confidential treatment). Either party may
issue a press release or other statement announcing the existence (but not the
Confidential Terms) of this Agreement, provided that the party first obtains the
other party's written approval of the content of the press release, which
approval will not be unreasonably withheld.
ARTICLE X. XXXXX OF NONEXCLUSIVE LICENSE
5.1 For the consideration set forth in Section 6.1 and subject to the terms
of this Agreement, including, without limitation Section 5.2 below, as of the
Effective Date LASERSIGHT hereby grants and agrees to grant to BAUSCH under
Patent No. '679 a nonexclusive license (without the right to sublicense, except
to Affiliated Companies of BAUSCH, during such times as such Person or Persons
continue to be Affiliated Companies of BAUSCH and except as set forth below):
(a) to make, have made, use, lease, import into the United States, offer
to sell, sell, and/or otherwise dispose of Products,
(b) to perform and have performed the methods embodying the invention
thereof in the Ophthalmic field, and
(c) to sublicense, without the right to grant further sublicenses, the
methods embodying the invention thereof to users of the Products
licensed under subsection 5.1(a) above.
5.2 The license granted to BAUSCH pursuant to Section 5.1 shall only apply to
Products made by (a) BAUSCH or its Affiliated Companies exclusively for the
sale by BAUSCH, its Affiliated Companies or distributors for BAUSCH or its
Affiliated Companies, (b) Technovision GmbH for BAUSCH, provided that this
subsection 5.2(b) shall be of no further force or effect if Technovision
GmbH directly or indirectly becomes an Affiliated Company to Alcon
Laboratories, Inc. or any of its Affiliated Companies, (c) Unrelated Third
Parties selected by BAUSCH to make a Product for BAUSCH, which Unrelated
Third Parties are not at the time BAUSCH selects such party to make such
Product (and within a period of six months prior to such selection) engaged
anywhere in the world in the sale (including sale through distributors) of
such Product, provided that if BAUSCH selects such Unrelated Third Party to
make an additional Product for BAUSCH, at the time of such further
selection (and within a period of six months prior to such selection) such
party may not be engaged anywhere in the world in the sale (including sale
through distributors) of such additional Product, and (d) Unrelated Third
Parties selected by BAUSCH to make a Product for BAUSCH, which parties are
at the time BAUSCH selects such party to make such Product (and within a
period of six months prior to such selection) engaged anywhere in the world
in the sale (including sale through distributors) of Products other than
the Product such party will make for BAUSCH, provided that the Product that
such party makes for BAUSCH must be designed and made exclusively for
BAUSCH, provided further that if BAUSCH selects such Unrelated Third Party
to make an additional Product for BAUSCH, at the time of such further
selection (and within a period of six months prior to such selection) such
party may not be engaged anywhere in the world in the sale (including sale
through distributors) of such additional Product. For purposes of Section
5.1 Affiliated Companies of BAUSCH shall not include any type of
cooperative venture involving BAUSCH or Affiliated Companies of BAUSCH on
the one hand and Alcon Laboratories, Inc. or Affiliated Companies of Alcon
Laboratories, Inc. on the other hand.
5.3 As of the Effective Date LASERSIGHT hereby releases and discharges BAUSCH
and each of its Affiliated Companies and their officers, directors,
employees, representatives, agents, customers and attorneys, and grants
each such person and entity immunity from suit from and against any and all
claims, demands, actions, or causes of action related to any infringement
of Patent No. '679 which arose or which may arise at any time during the
existence and continuation of the license granted to BAUSCH by this
Agreement.
5.4 The parties understand and agree that no license or other right is granted
herein to either party, directly or by implication, estoppel or otherwise,
with respect to any trade secrets or know-how, and that no such license or
other right shall arise from the consummation of this Agreement or from any
acts, statements or dealings leading to such consummation. Except as
specifically provided herein, neither party is required hereunder to
furnish or disclose to the other any technical or other information.
ARTICLE VI. CONSIDERATION/CERTAIN TERMINATION RIGHTS
6.1 In consideration for the non-exclusive rights granted under Article V of
this Agreement, BAUSCH shall make a lump sum payment to LASERSIGHT in the
amount of $2,999,900 (the "License Payment"). Such payment shall be made
within five days after the Effective Date via wire transfer of immediately
available funds to an account designated by LASERSIGHT.
6.2 Unless BAUSCH makes the Final Payment as described in Section 6.4, then at
any time after the expiration of the 15 day period immediately following
the conclusion of the Due Diligence Period, LASERSIGHT may elect to
terminate the license granted to BAUSCH pursuant to this Agreement by (i)
paying BAUSCH $3,000,000, as such amount is reduced by payments to BAUSCH
pursuant to Section 6.3, and (ii) notifying BAUSCH in writing that the
license granted to BAUSCH under this Agreement is terminated.
6.3 Unless otherwise provided herein, commencing as of the Effective Date,
LASERSIGHT shall thereafter pay BAUSCH 10% of Net Royalties, up to a total
of $3,000,000, provided that in no event will LASERSIGHT be obligated
pursuant to this Agreement to pay BAUSCH more than $500,000 in any calendar
year. Payments to BAUSCH pursuant to this Section 6.3 shall be made on
February 1 and August 1 of each year hereafter and shall take into account
Net Royalties received through the applicable December 31 and June 30 time
period. Each such payment shall be accompanied by a report describing the
calculation of Net Royalties that relate to such six-month period.
LASERSIGHT's obligations under this Section 6.3 shall cease and be of no
force or effect upon the first to occur of (i) BAUSCH making the Final
Payment to LASERSIGHT, (ii) LASERSIGHT making the payment to BAUSCH
described in Section 6.2 or 6.5, or (iii) LASERSIGHT paying BAUSCH a total
of $3,000,000 pursuant to this Section 6.3 or 6.5.
LASERSIGHT shall keep, maintain and preserve in its principal place of
business until such time as Bausch makes the Final Payment or LASERSIGHT
pays Bausch $3,000,000 pursuant to Section 6.3 and for at least 18 months
thereafter, complete and accurate books, accounts, records and other
materials covering all transactions related to the generation and
calculation of Net Royalties. BAUSCH may designate an independent auditor
or auditors and such independent auditor or auditors shall have the right
to inspect and audit all such materials related to the generation and
calculation of Net Royalties. Such materials shall be available for
inspection and audit (including photocopying) at any time during the period
set forth in this Section above; however, such inspection or audit shall
not occur more often than once every 12 months during the term of this
Agreement, and shall take place during normal business hours and upon at
least two days notice. Should any audit indicate an underpayment of any
payments due hereunder then LASERSIGHT shall promptly pay BAUSCH the full
amount of any underpayment.
LASERSIGHT shall require any transferee of LASERSIGHT's rights or
obligations pursuant to this Agreement to discharge LASERSIGHT's
obligations pursuant to this Section 6.3.
6.4 If BAUSCH delivers the Election Notice in accordance with Section 3.3,
BAUSCH shall pay LASERSIGHT an additional $2,000,000 (the "Final Payment")
within the five day period immediately after the conclusion of the 10 day
period described in Section 3.3. The Final Payment shall be made via wire
transfer of immediately available funds to an account designated by
LASERSIGHT. If BAUSCH pays LASERSIGHT the Final Payment the license to
Patent No. '679 granted in this Agreement shall not be subject to
termination and the provisions of Sections 6.2, 6.3 and 6.5 shall not apply
and shall be of no force and effect.
6.5 Notwithstanding any of the foregoing, if (i) BAUSCH elects not to deliver
the Election Notice pursuant to Section 3.3 and (ii) LASERSIGHT has not
paid BAUSCH a total of $3,000,000 under the terms of Sections 6.2 and 6.3
and (iii) there is a Change in Control of either Parent or Technologies,
then within 30 days after the occurrence of the event causing such Change
in Control, LASERSIGHT shall pay to BAUSCH the difference between
$3,000,000 and the total amount received by BAUSCH under Section 6.3.
ARTICLE VII. EVENT OF BANKRUPTCY
All licenses granted under this Agreement by LASERSIGHT to BAUSCH, for all
purposes of Section 365(n) of Title XI of the United States Code ("Title XI"),
are licenses of rights to "intellectual property" as defined in Title XI. For as
long as BAUSCH has a license pursuant to this Agreement LASERSIGHT shall create
and maintain current copies to the extent practicable of all such intellectual
property which shall include, without limitation, the Patent Materials. If
during the period of time BAUSCH has a license pursuant to this Agreement a
bankruptcy proceeding is commenced by or against LASERSIGHT under Title XI,
BAUSCH shall be entitled to a copy of any and all such intellectual property,
and the same, if not in the possession of BAUSCH, shall be promptly delivered to
it (i) upon BAUSCH's written request following the commencement of such
bankruptcy proceeding, unless prohibited by applicable law or unless LASERSIGHT,
or its trustee or receiver, elects within 30 days to continue to perform all of
its obligations under this Agreement, or (ii) if not delivered as provided under
clause (i) above, upon BAUSCH's request following the rejection of this
Agreement by or on behalf of LASERSIGHT, unless prohibited by applicable law. If
BAUSCH has taken possession of all applicable embodiments of the intellectual
property of LASERSIGHT pursuant to this Section and the trustee in bankruptcy of
LASERSIGHT does not reject this Agreement, BAUSCH shall promptly return such
embodiments. If LASERSIGHT seeks or involuntarily is placed under Title XI and
the trustee rejects this Agreement as contemplated under 11 U.S.C. 365(n)(1),
BAUSCH reserves all of its rights including, without limitation, the right to
elect pursuant to Section 365(n) to retain all rights granted to BAUSCH under
this Agreement to the extent permitted by law.
ARTICLE VIII. PATENT MAINTENANCE
8.1 LASERSIGHT shall pay all fees and costs necessary to maintain Patent No.
'679 for its full term.
8.2 In the event Patent No. '679 is subject to a legal or an administrative
proceeding concerning patent validity, patentability or a related issue,
LASERSIGHT shall inform BAUSCH of such a proceeding and keep BAUSCH
regularly apprised of such proceedings.
ARTICLE IX. GOVERNING LAW; DISPUTE RESOLUTION
9.1 All parties to this Agreement, including the undersigned parties, their
successors and assigns and all others who may hereafter become bound by
this Agreement by assuming it or otherwise (all collectively, the
"Parties") do hereby reciprocally and irrevocably agree to the following
matters, all of which shall also apply fully to anyone else who has or
asserts any rights under this Agreement as third party beneficiary or
otherwise (all of whom are also "Parties" as used herein):
(a) Choice of Law: This Agreement shall in all respects be construed and
enforced in accordance with the law of the State of Delaware.
(b) Claims as to Subject Matter to be Determined in Delaware Courts: All
judicial cases or proceedings involving Parties and involving subject
matter that includes any claims, demands or disputes that now exist or
may hereafter arise (all collectively called "Claims" herein) arising
from or relating to any aspect of, (1) the negotiation or execution of
this Agreement, (2) any question as to the validity or effect of this
Agreement, (3) anything done by anyone in the performance of this
Agreement, (4) any alleged breach of this Agreement, or (5) any
alleged modification, extension or continuation of this Agreement (all
collectively called the "Subject Matter" herein), shall, whether or
not such proceedings or cases also involve other parties or matters,
proceed and be determined only in the state and/or federal courts
located in New Castle County, State of Delaware (all collectively,
"Delaware Courts") and in the courts having appellate jurisdiction
over them, and not elsewhere.
(c) No Proceedings Elsewhere: No Party shall initiate or pursue any case
or proceeding of any kind against any other Party as to any Claim
arising from or relating to any aspect of the Subject Matter, in any
forum other than a Delaware Court.
(d) Waiver of Objections to Forum; Waiver of Change of Forum Remedies: All
Parties hereby reciprocally and irrevocably waive in advance any and
all objections to the Delaware Courts as proper forums based upon any
of: venue, the doctrine of forum non conveniens, the present or future
pendency of any other case or proceeding elsewhere, any compulsory
counterclaim rule, or any other doctrine, statute, rule, practice or
fact related to such objection.
(e) Submission to In Personam Jurisdiction; Service of Process: For
purposes of all actions or proceedings that involve Claims arising
from or relating to the Subject Matter (whether or not they also
involve other matters or parties), all Parties do hereby irrevocably
submit themselves to the personal jurisdiction of each and all of said
Delaware Courts, and do hereby irrevocably agree for purposes of all
such actions or proceedings that service of such Delaware Courts'
process upon them may be duly perfected by the following method,
which, in itself, shall constitute due and sufficient service of such
process, hand delivery or delivery by a nationally recognized courier
service to a Party at its address stated below, or by certified mail,
return receipt requested, to the Party at such address:
LASERSIGHT INCORPORATED
0000 Xxxxxxxxxx Xxxxxxxxx
Xxxxx 000
Xxxxxxx, XX 00000
Attention: Chief Executive Officer
BAUSCH & LOMB INCORPORATED
Xxx Xxxxxx xxx Xxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
Attention: Senior Vice President and General Counsel
ARTICLE X. ASSIGNMENT/TRANSFER OF PATENT OR RIGHTS
Neither this Agreement nor any interest hereunder shall be assignable by
BAUSCH, without the express written consent of LASERSIGHT, which consent may be
granted or withheld without or with reason in LASERSIGHT's sole discretion,
except that BAUSCH may assign all but not less than all of its rights and
obligations under this Agreement to any successor by way of (i) merger,
consolidation or acquisition of BAUSCH, (ii) acquisition of substantially all of
BAUSCH's assets associated with laser vision corrective refractive surgery, or
(iii) merger, consolidation or the acquisition of the stock or other equity
interest of an Affiliated Company of BAUSCH owning substantially all of the
assets of BAUSCH associated with laser vision corrective refractive surgery,
provided however, in no event may BAUSCH assign or transfer this Agreement to
Alcon Laboratories, Inc. or an Affiliate Company thereof, without the express
written consent of LASERSIGHT. Other than the rights granted pursuant to the TLC
License, LASERSIGHT has not and shall not sell, transfer, assign, or otherwise
dispose of the ownership of Patent No. '679 (or any of the properties comprising
Patent No. '679) or any rights to receive any monetary consideration derived, in
any way, from the licensing of Patent No. '679 to any party other than BAUSCH
unless LASERSIGHT requires such party, and such party agrees in writing, to
assume all of the obligations of LASERSIGHT under this Agreement. In the event
of any such assignment, LASERSIGHT shall not be released from any obligations
hereunder but shall remain jointly obligated under the terms of this Agreement
unless released in writing by BAUSCH. Any attempted assignment in contravention
of the terms of this Article X shall be void ab initio. This Agreement shall
inure to the benefit of and shall be binding upon the parties and their
successors and permitted assigns, and the name of a party appearing herein shall
be deemed to include the names of such party's successors and permitted assigns
to the extent necessary to carry out the intent of this Agreement.
ARTICLE XI. RIGHT OF FIRST REFUSAL
11.1 If at any time during the continuation of BAUSCH's rights under Sections
5.1 and 5.2, LASERSIGHT receives a bona fide offer from any third party
("Third Party Offer") to purchase Patent No. '679 or one or more of the
properties comprising Patent No. '679 and LASERSIGHT wants to accept such
offer, LASERSIGHT shall give BAUSCH written notice (the "Offer Notice") of
the Third Party Offer. The Offer Notice shall include an offer (the
"Offer") to BAUSCH to purchase Patent No. '679 (or the applicable property
comprising Patent No. '679) upon the terms and conditions contained in the
Third Party Offer. The Offer Notice shall also include a copy of the Third
Party Offer stating all material terms and conditions, including the
purchase price and payment terms.. If the Third Party Offer contemplates a
closing of the Third Party Offer on a date that is sooner than 20 business
days after the date on which LASERSIGHT notifies BAUSCH of the Third Party
Offer, LASERSIGHT shall, as soon as possible, deliver to BAUSCH the
definitive agreements which have been accepted by the Third Party that will
be utilized to finalize the Third Party Offer. BAUSCH shall have 10
business days from the date of receipt of the Offer Notice to accept the
Offer in writing. If BAUSCH accepts the Offer, the parties shall use their
best efforts to finalize the transfer of Patent No. '679 to BAUSCH in
accordance with the terms of the Third Party Offer, including the closing
date contemplated in the Third Party Offer, provided that in no event will
such closing date occur until after the expiration of the 20 business day
period immediately following the date on which LASERSIGHT provided the
Third Party Offer to BAUSCH or the date which is 10 business days following
the date that LASERSIGHT provided such definitive agreements to BAUSCH, if
any, whichever is later. If BAUSCH does not respond prior to the expiration
of such 10 business day period or is unable to finalize the transaction in
accordance with the terms of the Third Party Offer, BAUSCH will be deemed
to have rejected the Offer, and LASERSIGHT shall be entitled to sell Patent
No. '679 (or the relevant property comprising Patent No. '679) to such
Third Party pursuant to the terms of the Third Party Offer and the
definitive agreements previously provided to Bausch, if any. If LASERSIGHT
does not finalize the sale of Patent No. '679 (or the relevant property
comprising Patent No. '679) in accordance with the terms of such Third
Party Offer and the definitive agreements previously provided to Bausch, if
any, LASERSIGHT shall again comply with the terms of this Section 11.1
before selling or disposing of Patent No. '679 ( or any relevant potion
thereof) to any Third Party.
11.2 BAUSCH acknowledges and agrees that the following transactions that may
result in the transfer of Patent No. '679 shall not be subject to the
requirements of Section 11.1: (i) the transfer of Patent No. '679 that
results from a Change in Control transaction, and (ii) a sale or transfer
to a LASERSIGHT Affiliated Company.
ARTICLE XII. MISCELLANEOUS
12.1 No variation or amendment of this Agreement shall bind either party unless
made in writing and agreed to in writing by a duly authorized officer of
Parent and a duly authorized officer of BAUSCH.
12.2 If any of the provisions of this Agreement are held void or unenforceable,
the remaining provisions shall nevertheless be effective, the intent being
to effectuate this Agreement to the fullest extent possible.
12.3 If either party fails to fulfill its obligations hereunder when such
failure is due to an act of God, or other event such as fire, flood, civil
commotion, riot, war (declared and undeclared), revolution, action by
government including delays in obtaining governmental approvals or
embargoes, then said failure shall be excused for the duration of said
event. This provision shall not apply where the failure to fulfill an
obligation results solely from the action or inaction of a party.
12.4 The headings in this Agreement are for convenience only and are not
intended to have any legal effect.
12.5 A failure by any party hereto to exercise or enforce any rights conferred
upon it by this Agreement shall not be deemed to be a waiver of any such
rights or operate so as to bar the exercise or enforcement thereof at any
subsequent time or times.
12.6 Nothing in this Agreement is intended or shall be deemed to constitute a
partnership, agency, employer-employee or joint venture relationship
between the parties. All activities by the parties hereunder shall be
performed by them as independent contractors. No party shall incur any
debts or make any commitments for or on behalf of the other party, unless
specifically authorized in writing by an officer of Parent or by an officer
of BAUSCH.
12.7 Each of BAUSCH and LASERSIGHT shall use its best efforts to obtain all
consents and authorizations of third parties and shall take such additional
action (including but not limited to the execution and delivery of such
further documents) as the other party may reasonably request in writing to
cooperate so that the transactions contemplated by this Agreement may be
expeditiously consummated.
12.8 Any notice, request, instruction or other communication required or
permitted to be given under this Agreement shall be in writing and shall be
given by sending such notice properly addressed to the other Party' s
address shown below (or any other address as any party may indicate to the
others from time to time in accordance with this section): (i) by hand or
by prepaid registered or certified mail, return receipt requested, (ii) by
a nationally recognized overnight courier service, or (iii) via facsimile
(provided such facsimile is sent by a machine which acknowledges receipt of
the transmission) at the following addresses:
LASERSIGHT:
LaserSight Incorporated
0000 Xxxxxxxxxx Xxxxxxxxx
Xxxxx 000
Xxxxxx Xxxx, Xxxxxxx 00000
Attn: President
Fax No.: 000-000-0000
BAUSCH:
Bausch & Lomb Incorporated
Xxx Xxxxxx xxx Xxxx Xxxxx
Xxxxxxxxx, Xxx Xxxx 00000
Attn: Senior Vice President and General Counsel
Fax No. 000-000-0000
Any notice if sent as set forth above, shall be deemed made (a) three (3) days
after the date of mailing as indicated on the certified or registered mail
receipt, (b) on the next business day if sent by overnight courier service, or
(c) on the date of delivery if hand delivered or the date of transmission if
sent by facsimile transmission.
12.9 This Agreement constitutes the entire agreement between the parties as to
the subject matter hereof, and all prior negotiations, representations,
agreements and understandings are merged into, extinguished by and
completely expressed by this Agreement.
12.10 In any interpretation of this Agreement, it shall be deemed that this
Agreement was prepared jointly by the parties, and no ambiguity shall be
resolved against either party on the premise or presumption that it was
responsible for drafting this Agreement.
12.11 This Agreement may be executed in one or more identical counterparts, each
of which shall be deemed an original but all of which together shall
constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first set forth above.
BAUSCH & LOMB INCORPORATED
September 7, 2001 By: /s/ Xxxxxxx X. XxXxxxxx
----------------------------
Xxxxxxx X. XxXxxxxx
Senior VP and CFO
LASERSIGHT INCORPORATED
September 7, 2001 By: /s/ Xxxxxxx X. Xxxxxx
----------------------------
Xxxxxxx X. Xxxxxx
President and CEO
LASERSIGHT TECHNOLOGIES, INC.
September 7, 2001 By: /s/ Xxxxxxx X. Xxxxxx
----------------------------
Xxxxxxx X. Xxxxxx
President and CEO
EXHIBIT A
PATENT NO. '679 PROPERTIES
1. U. S. Patent No. 5,520,679, filed March 25, 1994. Owner: Parent.
2. Reissue of U.S. Patent No. 5,520,679, which is the subject of a Notice of
Allowance issued by the Patent and Trademark Office on April 30, 2001.
Owner: Parent
3. United States Application No. 09/826,843, filed April 6, 2001. Owner:
Technologies
